WORLD TRADE  
ORGANIZATION  WT/DS290/R 
15 March 2005 
 (05-0936) 
 Original:   English 
  
 
     
EUROPEAN COMMUNITIES – PROTECTION OF 
TRADEMARKS AND GEOGRAPH ICAL INDICATIONS FOR 
AGRICULTURAL PRODUCTS AND FOODSTUFFS 
 
Complaint by Australia  
 
 
Report of the Panel 
 
  WT/DS290/R 
 Page i 
 
 
 TABLE OF CONTENTS 
 
I. INTRODUCTION ................................................................................................................... .1 
II. FACTUAL ASPECTS ..............................................................................................................2  
A. MEASURE AT ISSUE .....................................................................................................................2  
B. PROCEDURAL HISTORY ...............................................................................................................2  
1. Preliminary ruling prior to the first written submissions .....................................................2  
2. Request for exte nsion of time.................................................................................................. .3 
3. Request for sep arate reports................................................................................................... .3 
4. Request for factual information from the International Bureau of WIPO .........................3  
III. PARTIES' REQUESTS FOR FIND INGS AND RECOMMENDATIONS.........................4  
A. AUSTRALIA ............................................................................................................................... ..4 
B. EUROPEAN COMMUNITIES ..........................................................................................................4  
IV. ARGUMENTS OF THE PARTIES ........................................................................................4  
V. ARGUMENTS OF THE THIRD PARTIES ..........................................................................5  
VI. INTERIM REVIEW................................................................................................................. 5 
VII. FINDINGS....................................................................................................................... ........14  
A. PRELIMINARY ISSUES ................................................................................................................14  
1. Consistency of panel requests with Article 6.2 of the DSU .................................................14  
2. Measures no longer in force at the date of establishment of the Panel ..............................22  
3. Measures adopted after the date of  establishment of the Panel..........................................24  
4. Claims under Article 2(2) of the Paris Convention (1967), as incorporated by 
Article 2.1 of the TRIPS Agreement......................................................................................26  
5. Claim under Article 4 of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement and, consequently, under Article 24.5 of the TRIPS Agreement...................................................................................................................... ..........27
 
6. Claim under Article 41 in conjunction with Articles 43, 44, 45, 46, 48 and 49 of 
the TRIPS Agreement............................................................................................................ .29 
7. Claim under Article 20 of the TRIPS Agreement................................................................30  
8. Claims under Article 4 of the TRIPS Agreement, Article I:1 of GATT 1994 and 
Article 2.1 of th e TBT Agreement .........................................................................................31  
9. Claim under Articles 1, 63.1 and 63.3 of the TRIPS Agreement ........................................31  
10. Claim regarding application proce dures under the TRIPS Agreement ............................31  
11. Claim regarding the labelling requirement under GATT 1994..........................................32  
12. Endorsement of arguments by another complainant ..........................................................33  
13. Exhibits containing legislation of other Members ...............................................................35  
14. Request by a third party for a suggestion on ways to implement a 
recommendation................................................................................................................. .....35  WT/DS290/R 
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 15.
 Order of analysis of claims.................................................................................................... .36 
B. NATIONAL TREATMENT CLAIMS ..............................................................................................36  
1. Availability of protection..................................................................................................... ...36 
(a) Do the conditions in Article 12(1) of the Regulation apply to WTO Members?......................36  
(b) National treatment under th e TRIPS Agreement ......................................................................49  
(c) National treatment under GATT 1994......................................................................................69  
2. Application procedures ......................................................................................................... .73 
(a) Description of application procedures under Articles 5 and 12a of the Regulation .................73  
(b) National treatment under th e TRIPS Agreement ......................................................................74  
(c) National treatment under GATT 1994......................................................................................80  
3. Objection pr ocedures........................................................................................................... ...85 
(a) Description of objection procedures under Ar ticles 7, 12b and 12d of the Regulation ............85  
(b) National treatment under th e TRIPS Agreement ......................................................................86  
4. Regulatory committee........................................................................................................... ..92 
(a) Description of procedure laid down in Article 15 of the Regulation........................................92  
(b) National treatment under th e TRIPS Agreement ......................................................................93  
(c) National treatment under GATT 1994......................................................................................95  
5. Labelling requirement.......................................................................................................... ..96 
(a) Factual aspects of the labelling requirement in Article 12(2) of the Regulation ......................96  
(b) National treatment under the TBT Agreement .......................................................................100  
C. TRADE -RESTRICTIVENESS CLAIM ...........................................................................................110  
1. Inspection structures .......................................................................................................... ..110  
(a) Description of inspection structures (Articl es 4.2(g), 10 and 12a of the Regulation).............110  
(b) Trade-restrictiveness under the TBT Agreement....................................................................112  
D. TRADEMARK CLAIMS ..............................................................................................................117  
1. The relationship between G Is and prior trademarks ........................................................117  
(a) Introduction................................................................................................................... ..........117  
(b) Description of Article 14(2) of the Regulation .......................................................................118  
(c) Article 14(3) of the Regulation...............................................................................................1 21 
(d) Relationship between protection of GIs and prior trademarks under the TRIPS 
Agreement...................................................................................................................... .........130  
(e) Article 24.3 of the TRIPS Agreement.....................................................................................139  
(f) Article 17 of the TRIPS Agreement........................................................................................141  
2. Identical signs for identical goods .......................................................................................150  
(a) Presumption of confusion ....................................................................................................... 150 
3. Trademark owners' right to ob ject to GI registration ......................................................152   WT/DS290/R 
 Page iii 
 
 
 (a) Admissibility of objections.................................................................................................... .152 
(b) Consideration of objections .................................................................................................... 153 
E. OTHER CLAIMS .......................................................................................................................154  
1. Minimum standards of GI protection .................................................................................154  
2. Articles 10 bis and 10 ter of the Paris Convention (1967)....................................................156  
3. Claims under Part III of the TRIPS Agreement................................................................159  
4. Claims concerning transitional national protection ..........................................................159  
5. Claims concerning individual registrations........................................................................160  
6. Claim under Article 1.1 of the TRIPS Agreement.............................................................163  
7. Consequential claims ........................................................................................................... .164 
VIII.  CONCLUSIONS AND RECOMMENDATION ................................................................164  
 WT/DS290/R 
Page iv  
 
 LIST OF ANNEXES
 
 
ANNEX A 
 
SUBMISSIONS BY AUSTRALIA 
 
Contents Page 
Annex A-1 Australia's Response to the European Communities' Request for a 
Preliminary Ruling (15 March 2004) A-2 
Annex A-2 First Written Submission of  Australia (23 April 2004) A-14 
Annex A-3 Oral Statement of Aust ralia – First Substantive Meeting 
(23 June 2004) A-81 
Annex A-4 Replies by Australia to Questions posed by the Panel and the 
European Communities to the Complaining Parties following the First Substantive Meeting (8 July 2004) A-87 
Annex A-5 Written Rebuttal Submission of Australia (22 July 2004) A-117 
Annex A-6 Opening Statement of Aust ralia – Second Substantive Meeting 
(11 August 2004) A-166 
Annex A-7 Closing Statement of Aust ralia – Second Substantive Meeting 
(12 August 2004) A-183 
Annex A-8 Replies by Australia to Questions posed by the Panel following the 
Second Substantive Meeting (26 August 2004) A-185 
Annex A-9 Comments of Australia on th e European Communities' Replies to 
Questions posed by the Panel and to Questions posed by Australia following the Second Substantive Meeting (2 September 2004) A-216 
Annex A-10 Comments of Australia on the Reply of the International Bureau of 
WIPO to the Panel's Letter of 9 July 2004 (28 September 2004) A-230 
 
  WT/DS290/R 
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 ANNEX B 
 
SUBMISSIONS BY THE EU ROPEAN COMMUNITIES 
 
Contents Page 
Annex B-1 European Communities' Request for a Preliminary Ruling 
(24 February 2004) B-2 
Annex B-2 First Written Submission of the European Communities (25 May 2004) B-20 
Annex B-3 Oral Statement of the European Communities – First Substantive 
Meeting (23 June 2004) B-107 
Annex B-4 Replies by the European Comm unities to Questions posed by the Panel 
following the First Substantive Meeting (8 July 2004) B-121 
Annex B-5 Second Written Submission of the European Communities 
(22 July 2004) B-164 
Annex B-6 Oral Statement of the Eur opean Communities – Second Substantive 
Meeting (11 August 2004) B-238 
Annex B-7 Replies by the European Comm unities to Questions posed by the Panel 
following the Second Substantive Meeting (26 August 2004) B-288 
Annex B-8 Replies by the European Comm unities to Questions posed by Australia 
following the Second Substantive Meeting (26 August 2004) B-347 
Annex B-9 Comments of the European Communities on Australia's and the 
United States' Replies to Questions posed by the Panel following the 
Second Substantive Meeting (2 September 2004) B-351 
Annex B-10 Comments of the European Communities on the Reply of the 
International Bureau of WIPO to the Panel's Letter of 9 July 2004 (28 September 2004) B-376 
 
 WT/DS290/R 
Page vi  
 
 ANNEX C 
 
ARGUMENTS OF THE THIRD PARTIES 
 
  Page 
ARGENTINA C-1 
BRAZIL C-5 
CANADA C-10 
CHINA C-19 
COLOMBIA C-25 
INDIA C-26 
MEXICO C-27 
NEW ZEALAND C-31 
SEPARATE CUSTOMS TERRITORY OF 
TAIWAN, PENGHU, KINMEN AND MATSU C-44 
EXHIBIT NZ-1 C-49 
EXHIBIT NZ-2 C-52 
 
 
ANNEX D  
 
MISCELLANEOUS 
  
Contents Page 
Annex D-1 Request for the Establishm ent of a Panel by Australia D-2 
Annex D-2 Letter dated 9 July 2004 from th e Panel to the International Bureau of 
WIPO D-4 
Annex D-3 Reply from the International Bu reau of WIPO to the Panel's Letter 
dated 9 July 2004, received by the Panel and the WTO Secretariat on 14 September 2004 D-5 
 
  WT/DS290/R 
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 TABLE OF CASES CITED IN THIS REPORT 
 
Short Title  Full Case Title and Citation  
Argentina – Footwear (EC)  Appellate Body Report, Argentina – Safeguard Measures on Imports of 
Footwear , WT/DS121/AB/R, adopted 12 January 2000, DSR 2000:I, 515 
Australia – Salmon  Appellate Body Report, Australia – Measures Affecting Importation of 
Salmon , WT/DS18/AB/R, adopted 6 November 1998, DSR 1998:VIII, 3327 
Brazil – Aircraft  Appellate Body Report, Brazil – Export Financing Programme for Aircraft , 
WT/DS46/AB/R, adopted 20 August 1999, DSR 1999:III, 1161 
Canada – Patent Term  Appellate Body Report, Canada – Term of Patent Protection , 
WT/DS170/AB/R, adopted 12 October 2000, DSR 2000:X, 5093 
Canada – Periodicals  Appellate Body Report, Canada – Certain Measures Concerning Periodicals , 
WT/DS31/AB/R, adopted 30 July 1997, DSR 1997:I, 449 
Canada – Pharmaceutical Patents
  Panel Report, Canada – Patent Protection of Pharmaceutical Products , 
WT/DS114/R, adopted 7 April 2000, DSR 2000:V, 2289 
EC – Asbestos  Appellate Body Report, European Communities – Measures Affecting 
Asbestos and Asbestos-Containing Products , WT/DS135/AB/R, adopted 
5 April 2001, DSR 2001:VII, 3243 
EC – Bananas III  Appellate Body Report, European Communities – Regime for the 
Importation, Sale and Distribution of Bananas , WT/DS27/AB/R, adopted 
25 September 1997, DSR 1997:II, 591 
EC – Bananas III (US)  Panel Report, European Communities – Regime for the Importation, Sale and 
Distribution of Bananas – Complaint by the United States , WT/DS27/R/USA, 
adopted 25 September 1997, as modified by the Appellate Body Report, 
WT/DS27/AB/R, DSR 1997:II, 943 
EC – Hormones  Appellate Body Report, EC Measures Concerning Meat and Meat Products 
(Hormones) , WT/DS26/AB/R, WT/DS48/AB/R, adopted 13 February 1998, 
DSR 1998:I, 135 
EC – Sardines  Appellate Body Report, European Communities – Trade Description of 
Sardines , WT/DS231/AB/R, adopted 23 October 2002 
EC – Tariff Preferences Appellate Body Report, European Communities – Conditions for the 
Granting of Tariff Preferences  to Developing Countries , WT/DS246/AB/R, 
adopted 20 April 2004. 
EEC – Parts and Components GATT Panel Report, European Economic Community – Regulation on 
Imports of Parts and Components , adopted 16 May 1990, BISD 37S/132 
India – Patents (US)  Appellate Body Report, India – Patent Protection for Pharmaceutical and 
Agricultural Chemical Products , WT/DS50/AB/R, adopted 16 January 1998, 
DSR 1998:I, 9 
India – Patents (US)  Panel Report, India – Patent Protection for Pharmaceutical and Agricultural 
Chemical Products – Complaint by the United States , WT/DS50/R, adopted 
16 January 1998, as modified by the Appellate Body Report, 
WT/DS50/AB/R, DSR 1998:I, 41 
India – Patents (EC)  Panel Report, India – Patent Protection for Pharmaceutical and Agricultural 
Chemical Products – Complaint by the European Communities , WT/DS79/R, 
adopted 22 September 1998, DSR 1998:VI, 2661 
Indonesia – Autos  Panel Report, Indonesia – Certain Measures Affecting the Automobile 
Industry , WT/DS54/R, WT/DS55/R, WT/DS59/R, WT/DS64/R and Corr.1, 
2, 3, and 4, adopted 23 July 1998, DSR 1998:VI, 2201 
Japan – Alcoholic Beverages II  Appellate Body Report, Japan – Taxes on Alcoholic Beverages , 
WT/DS8/AB/R, WT/DS10/AB/R, WT/DS11/AB/R, adopted 
1 November 1996, DSR 1996:I, 97  
Korea – Dairy  Appellate Body Report, Korea – Definitive Safeguard Measure on Imports of 
Certain Dairy Products , WT/DS98/AB/R, adopted 12 January 2000, 
DSR 2000:I, 3 
Korea – Various Measures on 
Beef  Appellate Body Report, Korea – Measures Affecting Imports of Fresh, 
Chilled and Frozen Beef , WT/DS161/AB/R, WT/DS169/AB/R, adopted 
10 January 2001, DSR 2001:I, 5 WT/DS290/R 
Page viii  
 
 Short Title  Full Case Title and Citation  
Korea – Various Measures on 
Beef  Panel Report, Korea – Measures Affecting Imports of Fresh, Chilled and 
Frozen Beef , WT/DS161/R, WT/DS169/R, adopted 10 January 2001, as 
modified by the Appellate Body Report, WT/DS161/AB/R, 
WT/DS169/AB/R, DSR 2001:I, 59 
Thailand – H-Beams  Appellate Body Report, Thailand – Anti-Dumping Duties on Angles, Shapes 
and Sections of Iron or Non-Alloy Steel and H-Beams from Poland , 
WT/DS122/AB/R, adopted 5 April 2001, DSR 2001:VII, 2701 
Turkey – Textiles  Panel Report, Turkey – Restrictions on Impor ts of Textile and Clothing 
Products , WT/DS34/R, adopted 19 November 1999, as modified by the 
Appellate Body Report, WT/DS34/AB/R, DSR 1999:VI, 2363 
US – 1916 Act  Appellate Body Report, United States – Anti-Dumping Act of 1916 , 
WT/DS136/AB/R, WT/DS162/AB/R, adopted 26 September 2000, 
DSR 2000:X, 4793 
US – Carbon Steel  Appellate Body Report, United States – Countervailing Duties on Certain 
Corrosion-Resistant Carbon Steel Flat Products from Germany , 
WT/DS213/AB/R and Corr.1, adopted 19 December 2002 
US – Certain EC Products  Appellate Body Report, United States – Import Measures on Certain 
Products from the European Communities , WT/DS165/AB/R, adopted 
10 January 2001, DSR 2001:I, 373 
US – Corrosion-Resistant Steel 
Sunset Review  Appellate Body Report, United States – Sunset Review of Anti-Dumping 
Duties on Corrosion-Resistant Carbon Steel Flat Products from Japan , 
WT/DS244/AB/R, adopted 9 January 2004  
US – FSC  
(Article 21.5 – EC)  Appellate Body Report, United States – Tax Treatment for "Foreign Sales 
Corporations" – Recourse to Article 21.5 of the DSU by the European 
Communities , WT/DS108/AB/RW, adopted 29 January 2002 
US – Gasoline  Appellate Body Report, United States – Standards for Reformulated and 
Conventional Gasoline , WT/DS2/AB/R, adopted 20 May 1996, 
DSR 1996:I, 3 
US – Section 110(5) Copyright 
Act Panel Report, United States – Section 110(5) of the US Copyright Act , 
WT/DS160/R, adopted 27 July 2000, DSR 2000:VIII, 3769 
US – Section 211 Appropriations Act  Appellate Body Report, United States – Section 211 Omnibus 
Appropriations Act of 1998 , WT/DS176/AB/R, adopted 1 February 2002 
US – Section 301 Trade Act  Panel Report, United States – Sections 301-310 of the Trade Act of 1974 , 
WT/DS152/R, adopted 27 January 2000, DSR 2000:II, 815 
US – Section 337 GATT Panel Report, United States Section 337 of the Tariff Act of 1930 , 
adopted 7 November 1989, BISD 36S/345 
 
  WT/DS290/R 
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 I. INTRODUCTION 
1.1 On 17 April 2003, Australia requested consultations1 with the European Communities 
pursuant to Article 4 of the Understanding on Ru les and Procedures Governing the Settlement of 
Disputes ("DSU"), Article XXII of the Ge neral Agreement on Tariffs and Trade 1994 
("GATT 1994"), Article 64 of the Agreement on Tr ade-Related Aspects of Intellectual Property 
Rights ("TRIPS Agreement") and Article 14 of th e Agreement on Technical Barriers to Trade 
("TBT Agreement") concerning the protection of tr ademarks and the registration and protection of 
geographical indications for foodstuffs and agricultu ral products in the European Communities.  The 
request was circulated to Members on 23 April 200 3 in document WT/DS290/1.  Consultations were 
held on 27 May 2003 but did not lead to a resolution of the dispute.   
1.2 On 18 August 2003, Australia requested the Dispute Settlement Body ("DSB") to establish a 
panel pursuant to Articles 4.7 and 6 of the DSU,  Article XXIII:2 of GATT 1994, Article 64 of the 
TRIPS Agreement and Article 14 of the TBT Agreement.2  At its meeting on 2 October 2003, the 
DSB established a single Panel pursuant to th e requests of the United States in document 
WT/DS174/20 and Australia in document WT/DS290/ 18, in accordance with Article 9 of the DSU 
(WT/DSB/M/156)3.  At that meeting, the parties to the dis pute also agreed that the Panel should have 
standard terms of reference.  The terms of  reference are, therefore, the following: 
"To examine, in the light of the relevant provisions of the covered agreements cited 
by the United States in document WT/DS174/20 and Australia in document WT/DS290/18, the matter referred to the DSB by the United States and Australia in those documents, and to make such findings as will assist the DSB in making the 
recommendations or in giving the rulings provided for in those agreements." 
1.3 On 13 February 2004, the United States and Australia requested the Director-General to 
determine the composition of the Panel, pursuant to paragraph 7 of Article 8 of the DSU.   
1.4 On 23 February 2004, the Director-General accordingly composed the Panel as follows: 
 Chair:  Mr Miguel Rodríguez Mendoza 
 
 Members: Prof. Seung Wha Chang    Mr Peter Kam-fai Cheung  1.5 Argentina, Australia (in respect of the Unite d States' complaint), Brazil, Canada, China, 
Colombia, Guatemala, India, Mexico, New Zeala nd, the Separate Customs Territory of Taiwan, 
Penghu, Kinmen and Matsu (hereinafter referre d to as "Chinese Taipei"), Turkey and the 
United States (in respect of Australia's complaint)  reserved their rights to participate in the Panel 
proceedings as third parties. 
1.6 The Panel met with the parties on 23-24 June 20 04 and on 11-12 August 2004.  It met with 
the third parties on 24 June 2004. 
1.7 The Panel submitted its interim report to th e parties on 16 November 2004.  The Panel 
submitted its final report to th e parties on 21 December 2004. 
                                                     
 
1 WT/DS290/1. 
2 WT/DS290/18. 
3 WT/DS290/19 and Corr.1. WT/DS290/R 
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 II. FACTUAL ASPECTS 
A. M
EASURE AT ISSUE  
2.1 The measure at issue in this dispute is identif ied in Australia's request for establishment of a 
panel as Council Regulation (EEC) No. 2081/92 of 14 July 1992 on the protection of geographical 
indications and designations of origin for agricu ltural products and foodstuffs, any amendments 
thereto (including Council Regulation (EC) No. 692/ 2003 of 8 April 2003, published in the Official 
Journal of the European Union No. L99 of 17 Apr il 2003), and related impl ementing and enforcement 
measures. 
B. PROCEDURAL HISTORY  
1. Preliminary ruling prior to the first written submissions 
2.2 On 24 February 2004, the day after the Panel was composed and prior to the organizational 
meeting, the European Communities requested that  the Panel issue a preliminary ruling that the 
United States' and Australia's respective requests for establishment of a panel were inconsistent with 
the requirements of Article 6.2 of the DSU.  Th e European Communities considered it appropriate 
that the Panel issue a preliminary ruling before th e first written submissions of the parties were due. 
2.3 At the organizational meeting, the Panel sought the parties' views on a ppropriate procedures 
to deal with this request.  The complainants did not  object to filing written r esponses to the request for 
a preliminary ruling prior to their first written subm issions but requested additional time for the filing 
of their first written submissions. 
2.4 On 8 March 2004, the Panel adopted its working procedures and timetable, which indicated a 
date for the United States and Australia to file  written responses to the European Communities' 
request for a preliminary ruling.  They submitted their responses accordingly. 
2.5 On 5 April 2004, the Panel issued a preliminary ruling, which is set out in full in 
Section VII:A of this report. 
2.6 On 20 April 2004, the European Communities sent a letter to the Panel expressing its regret at  
the Panel's ruling and "reserving its right to rai se issues of law regarding the interpretation of 
Article 6.2 of the DSU before the Appellate Body".  In its letter, the European Communities asked the 
Panel to clarify the status of its preliminary ruling of 5 April 2004, in particular whether such ruling 
would be incorporated into the Panel's final repor ts and whether the findings contained in the ruling 
would be an integral part of the final reports. 
2.7 On 23 April 2004, the Panel responded to the European Communities, advising that its 
preliminary ruling would be reflected in th e Panel's final reports, as appropriate.   
2.8 On 26 April 2004, the European Communities sent a second letter to the Panel indicating that 
it had understood from the Panel's previous response that the findings contained in the preliminary 
ruling of 5 April 2004 would be incorporated into the Panel's final reports, and could, therefore, be 
appealed in the same way as any legal in terpretation contained in these reports.   
2.9 On 28 April 2004, the Panel responded again to the European Communities, advising that it 
had taken note of the European Communities' letter of 26 April 2004 and reiterating that its 
preliminary ruling would be reflected in its final reports, as appropriate.  WT/DS290/R 
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 2. Request for extension of time 
2.10 On 9 March 2004, the European Communities reque sted that the Panel extend the period for it 
to submit its first written submission in view of the circumstances that (a) there were two cases 
brought by two complainants;  (b) these cases did not appear to contain identical claims; and (c) these 
cases raised new and complex issues and involved a larg e number of claims.  It also alleged that the 
timetable was unbalanced in favour of the complainants. 
2.11 On 16 March 2004, the United States and Au stralia each responded to the European 
Communities' request, disagreeing with its assertions but not objecting to an extension of the period 
for the European Communities to submit its first written submission, provided that such extension 
would not affect the timeframe structure of the remainder of the timetable. 
2.12 On 22 March 2004, the Panel revised its timeta ble, extending the time for the submission of 
the respondent's first written submission, without affecting the time between any of the subsequent 
steps as established in the original timetable. 
3. Request for separate reports 
2.13 On 3 March 2004, after the conclusion of the Pa nel's organizational meeting, the European 
Communities filed a request pursuant to Article 9.2 of  the DSU that the Panel submit separate reports 
on the present dispute.  On 8 March 2004 the Pane l acknowledged receipt of such request.  The 
complainants did not comment on this request. 
2.14 On 23 April 2004, the Panel informed the parties that it would submit sepa rate reports on this 
dispute, as requested by the European Communities.   
2.15 At the second substantive meeting with the parties on 11-12 August 2004, the Panel invited 
the parties to comment on the way in which the Pane l should submit separate reports.  The Panel took 
note of the parties' views and confirmed the following facts:  (a) the complainants have made similar, 
but not identical claims in this dispute;  (b) the complainants have made se parate written submissions 
and separate oral statements and submitted separat e responses to questions, although they did submit 
16 common exhibits with their respective first writte n submissions;  (c) the complainants have not 
collectively endorsed the arguments made in one anot her's submissions although Australia, in its first 
oral statement, expressly endorsed certain  comments made by the United States4, and the 
United States, on occasions, cited information and ar guments submitted by Aust ralia in support of its 
arguments;  and (d) although each complainant r eserved its right to participate in the Panel 
proceedings as a third party in respect of the other' s complaint, they did not exercise these rights.  
They both declined the opportunity given to them by  the Panel to make a statement as a third party 
during the session with the third parties. 
4. Request for factual information from the International Bureau of WIPO 
2.16 On 9 July 2004, the Panel sent a letter to the International Bureau of WIPO requesting its 
assistance in the form of any factual information availa ble to it relevant to the interpretation of certain 
provisions of the Paris Convention for the Protection of Industrial Property.5  The parties were given 
the opportunity to comment.   
                                                      
4 Australia also stated that it endorsed all arguments  put forward by the United States in its closing 
statement at the second substantiv e meeting.  This is considered in paragraphs 7.69-7.82, below. 
5 Attached as Annex D-2 to this report. WT/DS290/R 
Page 4  
 
 2.17 The International Bureau's reply was received by the Panel and the WTO Secretariat on 
14 September 2004.  The Panel gave the parties an opportunity to submit comments on the reply by 
28 September 2004.  The parties submitted their comments accordingly.
6 
2.18 The factual information provided by the Interna tional Bureau consists of a note it prepared 
and five annexes containing excerpts from the O fficial Records of the various Diplomatic 
Conferences which adopted, amended or revised the pr ovisions currently contained in Articles 2 and 3 
of the Paris Convention (Stockholm Act of 1967)7.   
III. PARTIES' REQUESTS FOR FINDINGS AND RECOMMENDATIONS 
A. AUSTRALIA  
3.1 Australia requests that the Panel find that the measures at issue are inconsistent with the 
European Communities' obligations under: 
(a) Articles 1.1, 1.3, 3.1, 16.1, 22.2, 24.5, 41.1, 41.2, 41.3, 42, and 65.1 of the TRIPS 
Agreement and Article 2.1 of the TRIPS Ag reement, incorporating Articles 2(1) and 
2(2), 10 bis(1) and 10 ter(1) of the Paris Convention (1967);8 
(b) Article III:4 of GATT 1994; 
(c) Articles 2.1 and 2.2 of the TBT Agreement; and 
(d) Article XVI:4 of the WTO Agreement.  
3.2 Australia requests that the Panel recommend that the European Communities bring its 
measures into conformity with its obligations unde r the WTO Agreement, including in respect of the 
TRIPS Agreement, GATT 1994 and the TBT Agreement. 
B. EUROPEAN COMMUNITIES  
3.3 The European Communities requests that the Panel: 
(a) find that certain measures no longer in force or not yet adopted at the time the Panel 
was established, and Australia's claims "under Articles 43, 44, 45, 46, 47, 48, 49 of the TRIPS Agreement", under Article 2(2) of  the Paris Convention (1967) and "under 
Article 4 of the Paris Convention (1967)" as incorporated by Article 2.1 of the TRIPS 
Agreement, are outside the Panel's terms of reference;  and 
(b) reject all claims within the Panel's terms of reference. 
IV. ARGUMENTS OF THE PARTIES 
4.1 The arguments of the European Communities a nd Australia, as set out in their submissions 
(European Communities' request for a preliminary ruling;  Australia's r esponse to the European 
Communities' request for a preliminary ruling,  first written submissions, written rebuttals, oral 
statements, responses to questions; comments on eac h other's responses; and comments on the factual 
information from the International Bureau of  WIPO), are attached as Annexes A and B. 
                                                     
 
6 The submissions are attached to this report as Annexes A-10 and B-10. 
7 The International Bureau's Note, but not its anne xes, are attached as Annex D-3 to this report. 
8 Australia withdrew a claim made under Article 20 of the TRIPS Agreement as described in 
paragraph 7.53 below.  WT/DS290/R 
 Page 5 
 
 
 V. ARGUMENTS OF THE THIRD PARTIES 
5.1 The arguments of those third parties that made submissions to the Panel (first written 
submissions, oral statements and responses to ques tions) are summarized and attached as Annex C. 
VI. INTERIM REVIEW 
6.1 On 16 November 2004, the Panel s ubmitted its interim report to th e parties.  On 30 November 
2004, Australia and the European Communities subm itted written requests for review of precise 
aspects of the interim report.  On 7 December  2004, Australia and the European Communities 
submitted written comments on each other's request for interim review. 
6.2 The Panel has modified aspects of its report in  light of the parties' comments where it 
considered appropriate, as explained below.  The Pa nel has also made certain revisions and technical 
corrections for the purposes of clarity and accuracy.  References to paragra ph numbers and footnotes 
in this Section VI refer to those in th e interim report, except as otherwise noted. 
Further comments on 5 April 2004 preliminary ruling  
6.3 The European Communities requests the deletion of paragraphs 7.3 to 7.7 as the conformity 
of a panel request with Article 6.2 of the DSU must  be evaluated on the face of the panel request.  In 
its view, the references to discussions that take pla ce in other fora, such as the Council for TRIPS, are 
irrelevant for this purpose.   
6.4 Australia responds that nothing in the DSU precludes the Panel noting that subsequent events 
confirmed the correctness of a particular conclusion. 
6.5 The Panel recalls that the European Communiti es made a request for a preliminary ruling the 
day after the Panel was composed in which it alleged defects in the panel request and submitted that it 
was appropriate that the Panel issue a preliminary ruling before the first written submissions of the 
parties were due.  The Panel issued a preliminar y ruling accordingly, in wh ich it found that those 
allegations were unfounded on the face of the panel request and on the b asis of the facts available to it 
at that time.  That preliminary ruling sets out part  of the basic rationale for the Panel's findings and 
recommendation in this dispute.  Accordingly, in  the course of making an objective assessment of the 
facts, the Panel does not disregard probative eviden ce relevant to that ruling submitted later in the 
course of the proceeding, other than the referenc es to what took place during the consultations, which 
were without prejudice to the rights of the Eu ropean Communities and other parties in these 
proceedings, in accordance with Article 4.6 of th e DSU.  The Panel has modified the relevant 
paragraphs, numbered 7.3 to 7.9 of the final report, to elaborate on the reasons for their inclusion.   
Other preliminary rulings  
6.6 Australia requests that the Panel elaborate its reasoni ng in paragraphs 7.35 to 7.39 and 7.42 
to 7.45 with a view to reconciling it with that of the Appellate Body in Korea – Various Measures on 
Beef.  Australia asserts that at paragraph 88 of its re port on that dispute, the Appellate Body held that 
a panel could validly examine a WTO provision not sp ecified in the panel request for the purposes of 
determining the consistency of a measure with a provision that was specified in the panel request. 
6.7 As a general comment, the European Communities considers that the interim review stage 
should not serve as an occasion to restate major parts of a party's arguments, nor to relitigate substantial parts of the interim report.  Accord ingly, the European Co mmunities indicates that it 
refrains from commenting on all but two of the numerous issues raised by Australia without implying WT/DS290/R 
Page 6  
 
 its agreement to the others.  Specifically, the Eu ropean Communities asks the Panel to include the 
preliminary rulings in these paragraphs in its conclusions at paragraph 8.1. 
6.8 The Panel notes that paragraph 7.38, numbered 7. 42 in the final report, already explains why 
the assertion of an inconsistency with Article 4 of  the Paris Convention (1967) amounts to a claim, 
rather than an argument.  That distinction is re ferred to in the passage which Australia cites in its 
interim review comments.  The Panel has added further detail and quotations of language where 
Australia in effect asserted its claim and made consequential amendments.  The Panel notes that 
paragraph 39 of the Panel's preliminary ruling set ou t at paragraph 7.2 of the report already explains 
the basis on which the Panel accepted that the cl aim under Article 41 of the TRIPS Agreement was 
within its terms of reference.  The Panel did not ru le that Article 41 was within the terms of reference 
in all respects.  This situation is quite different from that of the claims and arguments in the case to 
which Australia refers. 
Claims regarding the "EC measure as a whole"
 
6.9 Australia comments that, apart from one limited aspect relating to the regulatory committee, 
the Panel has not addressed its claim that the EC measure as a whole accords less favourable 
treatment to imported products bearing an EC-defin ed GI than to like domestic products bearing an 
EC-defined GI, contrary to Article III:4 of GATT 1 994.  It requests that the Panel address the claim 
and reflect its finding on the "EC measure as a whole" in the conclusions.   
6.10 The Panel notes that Australia made claims regarding the "E C measure as a whole" under 
both the TRIPS Agreement and GATT 1994.  With resp ect to the claims under the TRIPS Agreement, 
Australia referred in paragraphs 195 to 205 of its first written submission to five aspects of the 
Regulation which the Panel dealt with separately in sub-sections B.2, B.1, E.5, B.3 and E.3 of the 
findings, respectively.  With respect to the claims  under Article III:4 of GATT 1994,  Australia listed 
eight bullet points at paragraph 177 of its firs t written submission and referred to their cumulative 
effect at paragraph 178.  The Panel dealt with th e third to sixth points in sub-section B.1 of the 
findings, the seventh point in sub-section B.2 and the eighth point in sub-section B.4.  The Panel has 
added paragraphs 7.274 and 7.275 of the final report to explai n why it is unnecessary to consider 
further the first and second points or the cumulativ e effect, and revised paragraph 7.66, numbered 
7.68 in the final report, with respect to the labelling requirement, which was not mentioned in the first written submission in support of this claim.  As fo r the conclusions, the Panel specifically sought the 
parties' views on whether they sought separate ruli ngs on the procedural aspects of the Regulation or a 
ruling on the Regulation as a whole, in Panel questi on No. 49.  In its response, Australia requested 
"that the Panel's findings be sufficiently detailed so  as to facilitate a positive solution to the current 
dispute".  The Panel has identified specific aspects of the Regulation in its conclusions which it has 
found inconsistent with a covere d agreement in order to enable the European Communities to 
implement the recommendation.  The Panel has not added a separate conclusion on the measure as a whole as this would not facilitate a positive solution to this dispute. 
Endorsement of arguments by co-complainant
 
6.11 Australia requests that the Panel amend paragraphs 7.67 to 7.75.  It comments that it did  
endorse generally all U.S. arguments, and did not ju st purport or attempt to endorse the arguments.  
This is a separate issue from whether the Panel cons idered any arguments that arose from this general 
endorsement.  Australia recalls that a panel is not  bound to accept the arguments of any party and is 
free to develop its own legal reasoning.  Where ther e is a single panel, but multiple complainants and 
multiple reports, a panel can use arguments put to it by either party in assessing common claims.  In 
this context, Australia has the right – either on grou nds of efficiency or by way of endorsing either 
similar or alternative arguments – to endorse, in ge neral terms, arguments by the other complainant in 
this dispute.  WT/DS290/R 
 Page 7 
 
 
 6.12 With respect to the timing of the general endor sement, Australia recalls the Appellate Body's 
comment in India – Patents (US) (at para. 88) that arguments – as distinct from claims – "are set out 
and progressively clarified in the first written s ubmissions, the rebuttal submission and the first and 
second Panel meetings with the parties as a case proceeds"  and asserts that, in this dispute, the timing 
of the general endorsement can be readily explained when the appropriate context is recalled.  At the 
time of the first opening statement, Australia en dorsed U.S. arguments relating to the European 
Communities' obligations concerning the overlapping claims that Australia and the United States had made with regard to national treatment (under the TRIPS Agreement and GATT 1994) and trademark 
rights.  The rest of Australia's first opening statem ent covered mainly claims that had not been made 
by the United States, namely, cl aims under Article 22.2 of the TR IPS Agreement and under the TBT 
Agreement.  Australia repeated this endorsement at the opening of the second panel hearing.  During 
the second hearing, however, the European Communiti es sought to make much of the fact that the 
United States and Australia did not have exactly th e same arguments and that this meant that the 
European Communities' arguments were correct.  It was in seeking to reject the European 
Communities' attempt to make more of the different  arguments by the complainants that Australia 
responded by clarifying that it endorsed all of the United States' arguments.   
6.13 Australia accepts that it could have made clearer  that its general endorsement was on the basis 
of endorsing the United States' arguments as alterna tive arguments wherever these were inconsistent 
with Australian arguments.  However, Austra lia maintains that any differences between the 
United States' and Australian arguments are not materi al to the matter before the Panel.  For example, 
regardless of the interpretation of Article 24.5 of  the TRIPS Agreement, both Australia and the 
United States agree that it does not provide the European Communities with an excuse for its breach 
of Article 16.1 of the TRIPS Agreement.   
6.14 Australia refers to the statement in para graph 7.72 that the Panel (or the European 
Communities) should not have to sift through th e United States or Australian arguments looking for 
any inconsistency in order to understand the Australian case (where it intersects with the general 
endorsement of the United States' arguments).  The Panel's comments may indicate that it does not 
consider a careful sifting of all of the arguments put  to it, including Australia 's, to be a necessary and 
integral part of its role.  As such a view would be  clearly contrary to Article 11 of the DSU, Australia 
requests that the statement be amended or withdrawn. 
6.15 Australia refers to the statement at paragra ph 7.74 and asserts that the Panel attributes, 
without evidence, certain motives to Australia a nd, as a consequence, impugns Australia's conduct.  
However, it asserts that the Panel's assessment of Australia's motives is wrong and requests that the 
statement be withdrawn.  While the Panel is right to ensure that a respondent's due process rights are 
protected, Australia comments that it is also incumbent on the Panel to respect the rights of a 
complainant and to ensure a fair hearing for all pa rties to a dispute.  Th e European Communities did 
not object to a single panel being established by the DSB.  Further, the European Communities was 
given extra time to prepare its first written subm ission, notwithstanding the largely overlapping nature 
of the claims by both complainants.  In the hear ings, the European Communities was allowed to speak 
as long as it wished, to introduce irrelevant material late in the process, to continuously reiterate 
immaterial points, and to waste time by asking the complainants a large number of irrelevant questions.  This hardly suggests that the Europ ean Communities has suffer ed in any way from the 
single panel considering, for both reports, all the argum ents put to it by either of the complainants.  
Further, as the European Communities had ample oppor tunity to counter the United States' arguments, 
Australia's general endorsement of the United St ates' arguments did not increase the "case" the 
European Communities had to answer or that the Panel had to consider. 
6.16 The European Communities expresses regret that Australia, in its comments on 
paragraphs 7.72, 7.74 and 7.75, summarily dismi sses arguments made by the European Communities 
as irrelevant or immaterial. WT/DS290/R 
Page 8  
 
 6.17 The Panel agrees that a complainant can endorse a co-complainant's arguments.  However, the 
Panel does not consider that Australia's comment in its closing statement at the second substantive 
meeting that "Australia endorses all of the argum ents put forward by the United States" was a 
sufficient basis for the Panel to c onsider that Australia's arguments as presented earlier were modified, 
given that there were material differences betw een those arguments and no information was provided 
as to how they should be reconcile d.  Paragraphs 7.71 and 7.72 alr eady explained this point but the 
Panel has expanded them into paragra phs 7.73 to 7.79 in the final re port to illustrate the problem.  The 
Panel has examined the parties' arguments in the course of its objective assessment under Article 11 
of the DSU but it does not undertake tasks inconsiste nt with that function.  The Panel has expanded 
paragraph 7.72, numbered 7.79 in the fina l report, for the avoidance of doubt. 
6.18 The Panel has been mindful of the due process rights of all parties in these proceedings.  The 
European Communities' consent to the establishment of a single panel did not relieve Australia of its 
burden of making a prima facie case in support of all its claims. 
6.19 The Panel takes note of Australia's explana tion of the surrounding circumstances.  
Paragraph 7.74 reflected the oral interventions at the second substantive meeting.  If Australia 
intended to respond to the European Communities' em phasis of differences between the complainants' 
respective arguments, then the mere assertion that t hose differences were not material was ineffective, 
and the endorsement would have transformed di fferences between the complainants' cases into 
contradictions within Australia's own case.  Au stralia's interim review comments do not present any 
circumstances that would justify the Panel taki ng a different approach but, rather, point out 
differences between the arguments Australia pres ented itself and those of the United States.  
Therefore, the Panel has retained the first and second sentences of paragraph 7.74, numbered 7.81 in 
the final report, but deleted the following discussion.   The Panel has also corrected paragraph 2.15. 
The phrase "[w]ithout prejudice to international agreements"
 
6.20 The European Communities requests the deletion of paragraphs 7.132 to 7.137 because it 
did not argue that the application of Article 12 of the Regulation would prejudice "the EC's 
obligations under the TRIPS Agreement ".  It quotes paragraph 66 of  its first written submission and 
paragraph 43 of its first oral statement and asser ts that "[t]hese statements do not contain any 
indication that the EC consider that its obligati ons under the TRIPS Agreement would be prejudiced 
by the application of Article 12 of Regulation 2081 /92.  Rather, the reference to the obligation to 
provide protection for geographical indications was clearly intended as a reference to the obligation of 
other WTO Members  to provide protection.  This is also what the EC explained in response to the 
Panel's Question No. 94(b)."  The European Communiti es agrees that it is true that it did not provide 
an explicit response to Panel question No. 20 but it asserts that it did, however, address this point in 
response to Panel question No. 94, in which it cl arified that whereas the application of these 
conditions would not prejudice the European Comm unities' national treatment obligations under the 
TRIPS Agreement, it would prejudice its national tr eatment obligations under the GATT.  Given this 
context, it comments that the Panel is wrong to re ad into the European Communities' submission a 
statement which the European Communities clearly did not make, and which contradicts the entire logic of the European Communities' submissions.  In  its view, by attempting to read admissions into 
the European Communities' submissi ons, the Panel effectively distorts  these submissions.  This is not 
compatible with the task of the Panel under Article  11 of the DSU, which is to make an objective 
assessment of the facts.  The European Communiti es also requests the deletion of paragraph 7.247 for 
the same reason and because it is unnecessary to  the legal analysis which precedes it. 
6.21 Australia responds that, in its view, the Panel's summation of the arguments put forward by 
the European Communities is accurate .  Australia notes that the stat ements quoted by the European 
Communities from its first written submission, first or al statement and response to question No. 94,  
in fact concern what Australia has referred to in  this dispute as "TRIPS-defined GIs" of which the  WT/DS290/R 
 Page 9 
 
 
 "EC-defined GIs" covered by the Regulation are ge nerally a subset. However, the dispute has not 
concerned the European Communities' implementati on of its obligations under the TRIPS Agreement 
and GATT 1994 concerning TRIPS-defined GIs more generally, it has concerned the European 
Communities' implementation of its obl igations in relation to EC-defined  GIs.  Australia suggests that 
the relevance of the European Communities' argume nts might be better understood if the Panel were 
to recall the relevance of the distinction between a "TRIPS-defined GI" and an "EC-defined GI".  At 
the same time, however, Australia is of the view that the Panel's analysis of the arguments put forward by the European Communities is entirely correct.  Since the allegedly incorrect nature of the 
statements was the only basis on which the European  Communities requested that paragraphs 7.132 to 
7.137 be deleted and paragr aph 7.247 be amended, Aust ralia suggests that the pa ragraphs be retained.  
6.22 The Panel takes note of the parties' comment s and has carefully reviewed the European 
Communities' submissions, statements and responses to  questions in this dispute, and confirms the 
following facts:  (a) the interim report is consis tent with the European Communities' own detailed 
analysis of the phrase "[w]ithout prejudice to intern ational agreements" in its rebuttal submission; and 
(b) the European Communities repeat edly emphasized the importance of its own obligations in the 
interpretation of the equivalence and reciprocity co nditions but there is no clear explanation on the 
record of this dispute as to how the obligations of other WTO Members would render the equivalence 
and reciprocity conditions under the European Co mmunities' own Regulation inapplicable and the 
Panel declines to speculate.  Therefore, the Panel has expanded and revised, rather than deleted, the 
relevant paragraphs, numbe red 7.139 to 7.145 in the final repor t, and deleted the other paragraph 
without affecting the preceding legal analysis.   
6.23 The Panel takes note that, although the Eu ropean Communities has now requested the 
deletion of most consideration of its own argum ents concerning the phrase "[w]ithout prejudice to 
international agreements", this poi nt is important to its defence and those arguments have not been 
withdrawn.  Therefore, the Panel considers it im portant to address them as part of its objective 
assessment of the matter before it, in accordance with its function under Article 11 of the DSU. 
Specific definitions of "nationals"
 
6.24 Australia comments that, in view of the Panel's ruli ng that it cannot be considered to have 
endorsed all of the United States' arguments in its cl osing statement at the second substantive meeting, 
Australia has not argued that the European Commun ities is a separate customs territory Member of 
the WTO within the meaning of footnote 1 to Arti cle 1.3 of the TRIPS Agreement or that, as a 
consequence, a special regime to determine nationa ls applies.  Notwithstanding that Australia has 
pointed to some seeming anomalies in the Europ ean Communities' responses  to the United States' 
arguments on the issue in Australia's response to  Panel question No. 104, Australia's views on the 
meaning of the term "national" are as set out in its response to Panel ques tion No. 23 (and referred to 
in paragraph 7.146).  It is not contested by Austra lia that the determination of which persons are EC 
nationals is generally a matter fo r determination by the European Communities under its own law.   
6.25 The Panel had observed that Australia's views on the meaning of "national", as reflected in 
the interim report, include references to persons w ho are domiciled or who have  a real and effective 
industrial or commercial establishment in a separ ate customs territory Member of the WTO.  
Consequently, the Panel considered it necessary to ad dress the applicability of that specific definition.  
However, in light of Australia's confirmation in its  interim review comments that it did not argue that 
the European Communities is a separate customs terri tory Member of the WTO, the Panel has revised 
paragraph 7.194, numbered 7.201 in the final report, and deleted the reasoning regarding that issue.    WT/DS290/R 
Page 10  
 
 Examination of applications for registration
 
6.26 The European Communities requests the amendment of para graph 7.307(b) to take account 
of the requirement in Article 12a(2)(a) of the Regul ation that a third country must also transmit "a 
description of the legal provisions and the usage on the basis of which the designation of origin or the 
geographical indication is protected or established in  the country", which is a question of the law of 
the third country not Community law.  It also co mments that paragraph 7.307 should explain how the 
European Communities can implement Article 24.9 of  the TRIPS Agreement with respect to such 
questions of foreign law, taking into account that the complainants have stated that such questions can 
be of high complexity and have indicated their unwillingness or inability to cooperate on such issues. 
6.27 Australia believes that the Panel's statement at paragraph 7.307 is accurate.  It does not 
preclude information concerning the domestic law of the country of origin being one of the criteria 
referred to in Article 12a(2)(a) of the Regulation.  Consequently, Australia suggests that there is no 
need for any change to paragraph 7.317. While the Panel may choose to elaborate its reasoning in 
respect of the consequences of Article 24.9 of the TRIPS Agreement, Australia does not believe such 
elaboration is necessary to the resolution of the dispute. 
6.28 The Panel takes note of the European Communitie s' request and notes that the description of 
protection in the country of origin is already incl uded in paragraph 7.307, numbered 7.303 in the final 
report, which is the logical place for it.  The Panel considers it inappropriate to make further findings 
in the paragraph.  The Panel's findings on tran smission of applications already apply to all 
accompanying documents, including the description of protection in the country of origin.  Further, 
this is an "as such" claim but Article 12a(2)(a) of the Regulation does not specify what form of 
description of protection in the country of origin  would be acceptable, nor is there conclusive 
evidence on this point.  In any event, Article 62 of the TRIPS Agreement would appear to be 
important in framing any recommendation on implemen tation, but it lies outside the Panel's terms of 
reference, as explained in paragra ph 7.314 of the final report.   
6.29 The Panel has also replaced, where appropriate, the word "verification" in relation to 
applications for registration later in the report in order to be consistent with the use of the word 
"examination" used in the description of the appl ication procedures and th e consideration of the 
national treatment claim under the TRIPS Agreement. 
Article 2.1 of the TBT Agreement  
6.30 Australia requests that the Panel review the reasoni ng set out in paragraphs 7.475 to 7.484, 
and elaborate its reasoning for the first sentence of paragraph 7.469 and the last sentence of paragraph 
7.471.  It comments that the Panel's analysis of the "less favourable treatment" elements of this claim 
seems premised on a misunderstanding of the basis of Australia's claim, which is the fact that 
Article 12(2) of the Regulation mandates – in the specified circumstances – a labelling requirement 
for an imported product bearing a GI that is no t similarly mandated for a domestically produced 
product bearing a GI.  Further, that mandated di fferential treatment results in less favourable 
treatment for an imported product bearing a GI.  Au stralia comments that, as the Panel noted, the 
challenge is made to the relevant provision "as such ".  Thus, the fact that the European Communities 
may have the discretion  to impose the same labelling requireme nt on a domestically produced product 
in the specified circumstances does not overcome th e inconsistency of the labelling requirement set 
out in Article 12(2) of the Regulation with the European Communities' national treatment obligation 
under the TBT Agreement.  If the Panel concludes th at some revisions are necessary, it requests that 
the Panel complete its analysis of this claim.  On  the issue of "like products", it requests the insertion 
in paragraph 7.471 of an example from its arguments.  WT/DS290/R 
 Page 11 
 
 
 6.31 The European Communities opposes Australia's request regarding "like products".  The 
example given is one on which no discussion has taken place, and this is an issue on which Australia 
has made no claims or arguments.   
6.32 Regarding marks of origin, the European Comm unities requests the deletion of point (b) of 
paragraph 7.469, with which it does not agree.  Th e use of the words "made in" is not a specific 
requirement for a mark of origin in Article IX :1 of GATT 1994.  It comments that it does not 
understand what is meant by the references in that pa ragraph to indication "in pictorial matter" nor by 
indication "alongside the GI" nor how this is rele vant.  Given the Panel's findings, it considers it 
unnecessary to reach a conclusion on this issue.   
6.33 The Panel notes that the interim report alread y explains why Australia's argument does not 
demonstrate any difference in treatment but has ma de an addition to paragraph 7.469 in the final 
report.  The reasoning in the paragraphs identified by Australia forms the basis for the statements it 
references in paragraphs 7. 465 and 7.467 and the Panel sees no need to elaborate.  The Panel has also 
retained the factual point in the paragraph, numbered 7.461 in the final report, because it is 
appropriate to explain why the European Communities'  defence concerning marks of origin appears to 
be irrelevant to the preceding legal analysis.  However, it has modified the point.   
Right to prevent the use of translations of registered GIs  
6.34 The European Communities considers that it would be useful  to recall in paragraph 7.530, 
for the sake of completeness, that under Article 13( 1)(b) of the Regulation, GI holders do have a 
negative right to prevent the use of the regi stered name or names in translation.  
6.35 The Panel has added a footnote to clarify the scope of the positive right to use a GI with 
respect to translations and has also clarified the im portance of the fact that a trademark may continue 
to be used under Article 14(2) of the Regulatio n.  However, the Panel declines to amend the 
referenced paragraph as requested because the prot ection granted by Article 13 of the Regulation is 
already addressed elsewhere and it has not been s hown to what extent Article 13(1)(b) covers 
translations.  
Exceptions in trademark legislation with respect to the use of GIs  
6.36 The European Communities comments that the assertion in paragraph 7.569 to the effect 
that the its trademark legislation provides no excep tions with respect to the use of geographical 
indications is factually incorrect, and refers to its  response to Panel question No. 153 and, specifically, 
to Article 6.1(b) of the First Trademark Direc tive and Article 12(b) of the Community Trademark 
Regulation.  Therefore, even where a trademark ow ner is allowed under the GI Regulation to enforce 
his rights under the First Trademark Directive or the Community Trademark Regulation with respect 
to the confusing use of a registered GI, he cannot prevent such use if it is "in accordance with honest 
practices in industrial or commercial matters". 
6.37 Australia notes that the European Communities' comme nt is premised on the basis that an 
"indication concerning the ... geographical origin ... of goods" necessarily includes a GI, which is not 
always the case.  In any case, the European Communities' comment inte rsects with the issue raised by 
Australia concerning whether a TRIPS-defined GI – a nd thus an EC-defined GI – can be analogous to 
"a descriptive term" within the meaning of Article 17 of the TRIPS Agreement. 
6.38 The Panel takes note of the European Commun ities' factual correction and has deleted the 
paragraph.   WT/DS290/R 
Page 12  
 
 Scope of a limited exception for GIs in translation
 
6.39 The European Communities  suggests a redraft of paragraph 7.668 for the following reasons: 
(a) lest it imply that the European Communities agr ees with the last sentence of paragraph 7.666;  
(b) to include all the relevant limitations to the exception in Article 14(2) of the Regulation relied 
upon by the Panel including "what is undoubtedly the most crucial one, namely that the trademark 
owner maintains the right to prevent any confusi ng uses by all parties except the GI holders"; and 
(c) because a registration under the Regulation may sp ecify more than one linguistic version of the 
geographical indication and the last part of the second sentence of paragraph 7.668 may suggest 
otherwise.  
6.40 Australia requests that the argument attributed to it  in the first sentence of paragraph 7.668 
should be referenced or deleted.  Should the Pane l retain the paragraph, Australia notes that the 
suggested re-draft by the European Communities el iminates the final point of the second sentence that 
registration "does not cover the name where rendered differently in another language".  In Australia's 
view, the Panel's finding on this point is an accurate summation of the Eu ropean Communities' own 
description of the effect of registration of a term as a GI, and it cites various statements in the 
European Communities' submissions.  Australia su ggests that any redraft of the existing second 
sentence of the paragraph retain the point, give n the arguments actually made by the European 
Communities. 
6.41 The Panel has taken careful note of the partie s' comments and has amended the paragraph, 
numbered 7.659 in the final report, to track more closely the wording of the explanations in the 
European Communities' own submissions, and then ma de a finding on the basis of the terms of the 
legislation and those explanations.  It has also dele ted the reference to Austra lia, and added references 
in the succeeding paragraph and elsewhere to the lim itation provided by certain directives which the 
European Communities explained during the proceeding. 
Descriptive terms  
6.42 Australia requests that the Panel elaborate its r easoning at paragraph 7.689 which assumes 
that a GI is analogous to a descriptive term within  the meaning of the example in Article 17, taking 
account of the arguments put forward by the parties, including those made by Australia in relation to the design and architecture of the TRIPS Agreement. 
6.43 The Panel has revised this and the preceding pa ragraph for clarity and added a reference to 
certain directives which the European Communitie s explained during the proceeding that provide 
further explanation of the legitimacy of certain interests.  However, further elaboration on 
descriptiveness is unnecessary given that the Panel h as expressly recognized that GIs are intellectual 
property rights, has not found that GIs are purely descriptive terms, and has noted the express requirements in Article 2(2) of the Regulation that  GIs registered under the Regulation must describe 
certain matters.   
Comparison of exceptions provisions
 
6.44 Australia requests that paragraph 7.679 be substa ntially revised as it is not possible to 
consider differences in the language of the vari ous provisos in isolation from the nature of the 
minimum standards for the intellectual property rights concerned. 
6.45 The Panel has interpreted Article 17 in light of the minimum standard s of which it forms a 
part, and has noted differences from rights granted by  other forms of intell ectual property protection 
where appropriate elsewhere.  The Panel consid ers an observation of how the text differs from 
analogous texts in the same agreement to be re levant and does not base its reasoning on that  WT/DS290/R 
 Page 13 
 
 
 observation alone.  The Panel has modified the para graph, numbered 7.671, in light of the comment 
received.   
Articles 10 bis and 10 ter of the Paris Convention (1967)  
6.46 Australia comments that the reasoning as currently expressed in paragra phs 7.729 to 7.733 
seems to indicate that a responding party's assertion that it does not understand a claim is of itself a 
sufficient defence to a claim.  Australia requests th at the Panel review the content of these paragraphs 
and make appropriate am endments.  In Australia's view, the key issue is whether the Panel  understood 
Australia's claim and arguments and, if it did not, the steps it took to undertake an objective 
assessment.  Moreover, it asserts that when the European Communities said it could not understand 
the claim because it could not see how a situation could arise where there would be an act of unfair 
competition, that this indicated that the European  Communities did understand the claim, but did not 
agree that a relevant circumstance could arise.  This does not affect the relevant obligation under the 
TRIPS Agreement.   
6.47 The Panel takes note of Australia's comments and has expanded and revised the paragraphs, 
numbered 7.721 to 7.726 in the final report, to remove  this impression and to clarify the full extent of 
the argumentation in support of this claim on whic h the Panel was called upon to make its assessment.  
Individual registrations  
6.48 Australia requests that the Panel elaborate its reasoning in paragraph 7.753.  It seeks 
clarification whether Australia's failure to specify any individual registrations in respect of which it 
requires relief affected the Panel's conclusion, and whether the Panel exercises judicial economy 
concerning ongoing registrations.   
6.49 The Panel has reworded its existing reasoning in  the paragraph numbered 7.750 in the final 
report.  Australia's failure to specify any particular  individual registration effected after the date of 
establishment of the Panel was relevant to the exer cise of judicial economy on the preliminary ruling 
but not the conclusion on the claim, and this has been  clarified in paragraph 7.26 for the avoidance of 
doubt.   
Conclusions  
6.50 Australia asks whether the Panel exercises judicial economy on the claims under Article 2(1) 
of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement.   
6.51 The Panel has revised paragraph 7.252 to state its reasons for exercising judicial economy in 
relation to this provision, and reflected th is in its conclusions in paragraph 8.1. 
Suggestion by the Panel on a way to implement its recommendation  
6.52 Australia comments that it may assist the resolution of  the dispute if the Panel were not to 
make any recommendation on how the European Communities could bring its measure into conformity.  In Australia's view, amending the Regu lation to accord with the interpretation that the 
European Communities submitted to the Panel w ould not necessarily bring the measure into 
conformity, even with respect to the reciprocity and equivalence conditions.  This is because the 
European Communities consistently argued that th e reciprocity and equivalence conditions of the 
Regulation were not inconsistent with the Eur opean Communities' national treatment obligations 
under the TRIPS Agreement.  In addition, Australia is concerned that a recommendation by the Panel 
in respect of just one fi nding could be seen to suggest that the Pa nel's other findings of inconsistency 
are of lesser importance. WT/DS290/R 
Page 14  
 
 6.53 The European Communities expresses surprise at Australia's suggestion as it would appear 
that a clarification that the European Commun ities does not apply conditions of reciprocity and 
equivalence would remove the concern expressed by  Australia regarding the protection of its GIs 
under the Regulation.  As regards Australia's argumen t that "the EC consistently argued that the 
reciprocity and equivalence conditions of the Regulat ion were not inconsistent with the EC's national 
treatment obligations under the TRIPS Agreemen t", the European Communities recalls that it 
conceded that the application of such conditio ns would be incompatible with the GATT.  
Furthermore, the European Communities fails to se e the relevance of Australia's comment in the 
context of the discussion of paragraph 8.5, which con cerns an issue of implementation.  Finally, as 
regards Australia's concern that certain of the Pa nel's findings should not be regarded as being of 
lesser importance than others, the European Comm unities fails to see why a suggestion made by a 
Panel in respect of one of its findings would indicat e that this finding is more or less important than 
other findings.  For these reasons, the European  Communities requests that paragraph 8.5 not be 
deleted. 
6.54 The Panel has modified its suggestion in para graph 8.5 but, on the basis of the European 
Communities' remarks on interim review, considers it helpful to retain it.  This suggestion does not 
imply that the Panel's other findings of inconsistency are of lesser importance. 
Other requests for review
 
6.55 Australia also requested deletion of paragraphs 7. 64, 7.65 and 7.357 and footnote 526, and 
modifications to paragraphs 7.194, 7.214, 7.439, 7.473, 7.515 to 7.523, 7.589, 7.621, 7.700 and 8.2 
and footnotes 565 and 591.  It also makes some clerical observations.  The Panel has modified its 
report in light of those comments. 
6.56 The European Communities also requested modification of paragraphs 8.1 and 8.2.  The 
Panel has modified those paragraphs and pa ragraph 7.758 in light of those comments. 
VII. FINDINGS 
A. PRELIMINARY ISSUES  
1. Consistency of panel requests with Article 6.2 of the DSU 
7.1 On 24 February 2004, the day after the Panel was composed and prior to the organizational 
meeting, the European Communities submitted a deta iled request that the Panel issue a preliminary 
ruling that the United States' and Australia's resp ective requests for establishment of a panel were 
inconsistent with the requirements of Article 6. 2 of the DSU.  In accordance with the Panel's 
timetable, the United States and Australia submitte d responses to the European Communities' request 
for a preliminary ruling. 
7.2 On 5 April 2004, the Panel issued the following preliminary ruling.9 
 (a) Introduction 
  1. The European Communities is of the vi ew that the requests for establishment of a 
panel in this matter do not meet the requirements of Article 6.2 of the DSU.  It has requested 
that the Panel issue a preliminary ruling regarding this question.
10 
                                                      
9 The preliminary ruling is reproduced  with minor editorial changes. 
10 (footnote original) European Communities' request for a preliminary ruling dated 24 February 2004 
("EC request"), paras. 1, 2, 3 and 5.  [Note:  that request is attached as Anne x B-1 to this final report.]   WT/DS290/R 
 Page 15 
 
 
  
 (...)11  
  3. Australia is of the view that its requ est for establishment of a panel fully complies 
with the requirements of Article 6.2 of the DSU.   It submits that the substantive basis of the 
European Communities' request for a prelim inary ruling should be denied in full.
12 
  4. Article 6.2 of the DSU provides as follows:  
"2.   The request for the establishment of  a panel shall be made in writing.  
It shall indicate whether consultatio ns were held, identify the specific 
measures at issue and provide a brief summary of the legal basis of the complaint sufficient to present the probl em clearly.  In case the applicant 
requests the establishment of a panel with other than standard terms of reference, the written request shall include  the proposed text of special terms 
of reference." 
 5. The European Communities alleges that the requests for establishment of a panel are 
inconsistent with the following requirements in Article 6.2:  
 
(a) they fail to identify the specific measure at issue; and  
(b) they do not provide a brief summary of the legal basis of the complaint 
sufficient to present the problem clearly. 
 6. The Panel will examine each of the requests for establishment of a panel as a whole 
on its face in the light of the parties' respec tive communications to the Panel to date and the 
relevant provisions of the c overed agreements to assess its compliance with each of these 
requirements in the sections below.
13 
 
 (...)14 
  (c) Australia's request for establishment of a panel
15 
 
 (i) Identification of the sp ecific measure at issue 
 
 23. Australia's request, in its fourth paragra ph, identifies the following measures at issue: 
 
"The measure at issue is Council Re gulation (EEC) No. 2081/92 of 14 July 
1992 on the protection of geographical indications and designations of origin 
for agricultural products and foodstuffs , any amendments thereto (including 
Council Regulation (EC) No. 692/2003 of 8 April 2003, published in the Official Journal of the European Union  No. L99 of 17 April 2003), and 
related implementing and enforcement measures ('the EC measure').  The EC 
                                                     
 
11 Note:  paragraph 2 of the preliminary ruling dealt with the United States' request for establishment of 
a panel. 
12 (footnote original) Australia's comments on EC request, dated 15 March 2004 ("Australia's 
response"), paras. 1 and 48.  [Note:  those comments are attached as Annex A-1 to this final report.] 
13 (footnote original) This is consistent with the approach of the Appellate Body in US – Carbon Steel . 
14 Note:  paragraphs 7-22 of the preliminary ruling dealt with the United States' request for 
establishment of a panel. 
15 (footnote original) Document WT/DS290/18. WT/DS290/R 
Page 16  
 
 measure lays down and implements rules on the protection of designations of 
origin and geographical indications fo r agricultural products and foodstuffs, 
excluding wines and spirits."   
  Council Regulation (EEC) No. 2081/92 and any amendments thereto
 
 
 24. Australia's request identifies a particul ar regulation by the name of the authority 
which adopted it, by its number, by its date of  adoption and by its full  title.  It includes 
amendments of this regulation, including one amendment which is identified by the name of 
the authority which adopted it, by its number, by its date of adoption, by its full title and by 
the date and place of its publication.  This is a specific measure, 16 and the request has 
identified it.  There is no doubt as to which sp ecific measure is in i ssue, as the European 
Communities has itself demonstrated by annexing a consolidated text of the regulation to the 
request for a preliminary ruling.17 
  25. The European Communities argues that: 
 
"The unspecific reference to Regulation 2081/92 made in the Panel requests does not permit the EC to understand which specific aspects 
among those covered by Regulation 2081/92 the complainants intend 
to raise in the context of the present proceedings." (italics added) 
26. The Panel considers the ordinary meaning of the terms of the text in Article 6.2 of the 
DSU, read in their context and in the light of the object and purpose of the provision, to be 
quite clear.  They require that a request for establishment of a panel "identify the specific 
measures at issue".  They do not require the id entification of the "specific aspects" of these 
"specific measures."  
  "related implementing and enforcement measures"
 
 
 27. Australia's request identifies, in a ddition to the regulation and any amendments 
thereto, "related implementing and enforcement measures".  This phrase expressly refers to measures which implement and enforce Regul ation (EEC) No. 2081/92, as amended.  The 
word "related" is not used in isolation in the request.   
 
 28. The Regulation as amended itself expressly provides for the taking of particular types 
of decisions and actions and the adoption of rul es of procedure for applying the Regulation.  
For example, Article 6 provides for the Commissi on to verify that registration applications 
include all the requisite particulars and, if it concludes that the name qualifies for protection, 
to publish certain details and, if no objection is notif ied, the name is entered in a register or, if 
the Commission concludes that the name does not qualify for protection, to decide not to 
proceed with the publication. Article 11a provides that the Commission may cancel the 
registration of a name.  Article 12 provides fo r decisions by the Commission as to whether a 
                                                     
 
16 (footnote original) In this respect, the Panel notes that the Appellate Body in EC – Bananas III  (at 
para. 140 of its report) agreed with the Panel in that case that similar language in the following extract from a 
panel request sufficiently identified the specific measure at issue in accordan ce with Article 6.2 of the DSU:  "a 
regime for the importation, sale and distribution of bananas established by Regulation 404/93 [...], and subsequent EC legislation, regulations and administrative measures, including those reflecting the provisions of 
the Framework Agreement on bananas, which impl ement, supplement and amend that regime". 
17 (footnote original) Exhibit EC-1 annexed to EC request, supra  at 10. A list containing the names, 
numbers and dates of the amendments  reflected in the consolidated text of the regulation can be found on 
page 1 of that document.  WT/DS290/R 
 Page 17 
 
 
 third country satisfies the equivalence conditio ns and offers the requisite guarantees.  
Article 12b provides for the Commission, if it concludes that a name the subject of a 
registration request sent by a third country satisfies the conditions for protection, to publish certain details or, if it concludes that the name  does not satisfy the conditions for protection, 
to decide not to proceed with publication.  Ar ticle 16 provides for deta iled rules for applying 
the Regulation to be adopted.
18  Those decisions, actions and rules, among others, implement 
the Regulation.  The European Communities has indicated that the competent judicial and 
executive authorities enforce the Regulation.19  In the Panel's view, this does not imply that 
there is any uncertainty as to which measur es taken by those authorities implement and 
enforce the Regulation and which do not.  All of the Regulation's implementing and 
enforcement measures form a group of specific measures which, although they may be a large 
group, are identified by Australia's request for establishment of a panel.20 
  29. For these reasons, on the basis of the f acts available to us, the Panel rules that 
Australia's request for establishment of a panel did not fail to identify the specific measures at 
issue in accordance with Article 6.2 of the DSU. 
 
 (ii) A brief summary of the legal basis of the complaint sufficient to present the problem 
clearly 
 
 30. Australia's request, in its fifth paragr aph, sets out in eight bullet points alleged 
inconsistencies with the cove red agreements, by providing narrative text quoting or 
paraphrasing treaty text accompanied by provisions  of the covered agreements identified by 
number.  The numbered provisions identify every article of every covered agreement at issue 
and, in most cases where there are paragraphs  within an article, such paragraphs are 
identified. 
 
 31. The European Communities takes issue with Australia's reference to whether 
Regulation No. 2081/92 is a "technical regulation"  within the meaning of Annex 1 to the TBT 
Agreement because the definition does not impos e any obligations which could have been 
violated.
21   
 
 32. The Panel notes that the definition of "technical regulation" per se  is not an obligation 
but rather defines a term used in other provisi ons of the TBT Agreement set out in Australia's 
request.  The reference to the definition actually  presents the problem more, rather than less, 
clearly because it explains why Australia consider s that the measures at issue are subject to 
the relevant obligations. 
 
 33. The European Communities also takes issu e with the reference to Article 2 of the 
TRIPS Agreement (incorporating by reference Articles 10, 10 bis and 10 ter of the Paris 
Convention).  It argues that Articles 10, 10 bis and 10 ter are "complex provisions" divided 
into various paragraphs, and imposi ng numerous distinct obligations.  
 
 34. Australia replies that, irrespective of  the accuracy of the European Communities' 
portrayal of these provisions, its claim is that the measures at issue diminish the legal protection for trademarks under the TRIPS Agreement, contrary to all aspects of these cited 
provisions.
22  
                                                      
18 (footnote original) Exhibit EC-1. 
19 (footnote original) EC request, supra  at 10, para. 30. 
20 (footnote original) See supra  at 16. 
21 (footnote original) EC request, supra  at 10, para. 63. 
22 (footnote original) Australia's response, supra  at 12, para. 25. WT/DS290/R 
Page 18  
 
  
 35. The Panel considers that the mere lis ting of provisions of the relevant covered 
agreements may not satisfy the standard of Ar ticle 6.2 of the DSU, for instance, where the 
listed provisions establish multiple obligations ra ther than one single, distinct obligation.
23  
However, where the multiple obligations are clo sely related and interli nked, a reference to a 
common obligation in the specific listed provisions  may be sufficient to meet the standard of 
Article 6.2 of the DSU under certain circumstances in a particular case.24 
  36. With these considerations in mind, the Panel now examines the articles to which the 
European Communities has referred in Australia's  request for establishment of a panel.  The 
Panel notes that, on their face, the provisions w ithin each of these articles are interlinked and 
very closely related, and that the separate  paragraphs do not necessarily create distinct 
obligations.  In particular: 
  (a) Article 10 of the Paris Convention (1967) extends the application of the provisions of 
Article 9, which relates to seizure of goods , to false indications of source.  The 
second paragraph of Article 10 sets out a deeming provision for the purposes of the 
first paragraph; 
  (b) Article 10 bis of the Paris Convention (1967) sets out a single obligation in 
paragraph (1) regarding unfair competition whic h is clarified in, and therefore closely 
related to, paragraphs (2) and (3); and 
  (c) Article 10 ter of the Paris Convention (1967) sets out in paragraph (1) an obligation 
regarding legal remedies to repress all the acts referred to in Articles 9, 10 and 10 bis, 
and in paragraph (2) an obligation regard ing action to repress the same acts by 
particular types of legal person.   
  37. The European Communities al so takes issue with the reference to "Articles 41 and/or 
42 of the TRIPS Agreement".  It submits that Ar ticle 41 is a "complex provision" subdivided 
into a number of paragraphs, which contain a num ber of different obliga tions;  that Article 42 
comprises several sentences establishing distinct obl igations;  and that it "does not understand 
the 'and/or' which seems to indicate that Ar ticles 41 and 42 of the TRIPS Agreement are 
somehow alternative obligations".
25 
  38. Australia replies that its reference to the essential elements of the relevant provisions 
is sufficient in this dispute to shed light on the nature of the obligations at issue in relation to 
the specific measures at issue.  It also stat es that, in accordance with common usage, the 
expression "and/or" applies to all of the provisions cited.
26 
  39. The Panel makes the following observations:   (a) Article 41 of the TRIPS Agreement contai ns general obligations which relate to acts 
of infringement of intellectual property rights covered by this Agreement.  The 
accompanying narrative text of Australia's re quest clarifies that this claim is made 
because the measure at issue allegedly "dimin ishes the legal protection for trademarks 
under the TRIPS Agreement".  The general obligations in Article 41 relate to 
"enforcement procedures as specified in [P art III]".  Certain of those enforcement 
                                                     
 
23 (footnote original) See the Appellate Body report on Korea – Dairy , para. 124. 
24 (footnote original) See the Appellate Body report on Thailand – H-Beams , para. 93. 
25 (footnote original) EC request, supra  at 10, para. 57. 
26 (footnote original) Australia's response, supra  at 12, paras. 23 and 24.  WT/DS290/R 
 Page 19 
 
 
 procedures, namely under Article 42, are also  raised which clarifies that the general 
obligations are the subject of a claim in re lation to these procedures.  In particular, 
Article 42 is entitled "fair and equitable pr ocedures" which is the subject of an 
obligation in Article 41.2;   
 
 (b) Article 42 of the TRIPS Agreement cont ains closely related obligations concerning 
fair and equitable procedures.  The accompanying narrative text clarifies that this claim is made in relation to "the lega l protection for trademarks under the TRIPS 
Agreement".  The requirements of each senten ce in Article 42 are distinct but they all 
set out specific features of fair and equitable civil judicial procedures concerning the 
enforcement of intellectual property rights;  and 
  (c) the use of the term "and/or" at the end of a series or list of items connected by 
commas is a standard means of indicating that all items in that series or list may apply cumulatively or separately.
27  There is nothing in the cont ext of Australia's request for 
the establishment of a panel that would indi cate that it refers only to the last two 
items in the series.  There is nothing which prevents a complainant making claims in the alternative.  This puts the respondent on notice that the co mplainant effectively 
makes all these claims. 
  40. The European Communities further c ontends that it is entitled to know which 
provision or aspect of Regulation No. 2081/92 is supposed to violate certain obligations and 
in which way such a violation is deemed to occur.  In the Panel's view, the European 
Communities is seeking the arguments, rath er than just the claims, of Australia.
28  That being 
said, the Panel wishes to assure  the European Communities that it is fully entitled to know the 
arguments of Australia during the course of the proceedings .  Those arguments must be set 
out and may be clarified in Australia's submissions.29  However, Article 6.2 of the DSU does 
not require those arguments to be set out in the request for establishment of a panel.30 
  41. The Panel notes that Article 6.2 of the DS U calls for sufficient clarity with respect to 
the legal basis of the complaint so as to en able a defending party to begin preparing its 
defence.
31  Our examination of Australia's request fo r establishment of a panel as a whole, in 
the light of Australia's and the European Communities' respective communications to the 
Panel to date and the relevant provisions of th e covered agreements, leads us to believe that 
the request for establishment of a panel was su fficiently clear for the European Communities 
to begin preparing its defence. 
 
 42. For these reasons, on the basis of the f acts available to us, the Panel rules that 
Australia's request for establishment of a panel did not fail to provide a brief summary of the 
legal basis of the complaint sufficient to pr esent the problem clearly in accordance with 
Article 6.2 of the DSU. 
 
                                                      
27 (footnote original) The  Oxford English Dictionary defines "and/or" as "a formula denoting that the 
items joined by it can be taken either together or as alternatives".  ( A Supplement to the Oxford English 
Dictionary , R.W. Burchfield (ed.) (Clarendon Press, 1972,  reprinted, with corr ections, 1980, Vol. I). 
28 (footnote original) See the Appellate Body reports in EC – Bananas III ,  para. 141;  Korea – Dairy ,  
para. 139; and US – Carbon Steel ,  para. 173. 
29 (footnote original) See supra  at 24.  
30 (footnote original) See the Appellate Body report on Korea – Dairy , para. 123. 
31 (footnote original) See Appellate Body report on Thailand – H-Beams , para. 88. WT/DS290/R 
Page 20  
 
  (d) Due process 
  43. The European Communities is also of the view that the "deficiencies" of the requests 
for establishment of a panel seriously prejudi ce its due process rights as a defending party, 
notably, to know the case it has to answer.
32   
 
 44. The Panel recalls once again that Article  6.2 of the DSU calls for sufficient clarity 
with respect to the legal basis of the complain t so as to enable a defending party to begin 
preparing its defence.33  In this respect, the Panel has f ound that the complainants' requests for 
establishment of a panel were sufficiently cl ear for the European Communities to begin 
preparing its defence.34  Therefore, the Panel considers that it is not necessary to make a 
separate ruling on this issue, as presented by  the European Commun ities in its request.35 
  45. The Panel is mindful of the due process rights of all parties in this proceeding.  In this 
regard, it notes that the European Communities had a period of over four months after the 
establishment of the Panel prior to its constituti on plus a period of over seven weeks prior to 
receipt of the complainants' first written submis sions to begin preparing its case, and will have 
an additional period of four and a half weeks from receipt of the complainants' first written 
submissions to continue preparation of its own first written submission, which is in excess of 
the maximum period proposed in Appendix 3 to the DSU. 
 
 (e) Timeliness 
  46. The European Communities submitted its request for a preliminary ruling two days 
after the composition of the Panel.  It also rai sed its concerns at the DSB meetings at which 
the requests for establishment of a panel were considered.
36   
 
 47. The Panel therefore considers that the European Communities has raised its concerns 
in a timely manner.37 
  (f) Conclusion  
 48. In light of the foregoing, on the basis of the facts available to us, the Panel rules that 
the measures and claims in Australia's a nd the United States' respective requests for 
establishment of a panel did not fail to meet the requirements of Article 6.2 of the DSU that 
they identify the specific measures at issue and provide a brief summary of the legal basis of 
the complaint sufficient to present the problem clearly.  [End of 5 April 2004 ruling]  
 
7.3 The Panel stated expressly that its 5 April 2004 preliminary ruling was based on the facts 
available to it at that time.
38  In this final report, the Panel mak es further findings on the sufficiency of 
                                                      
32 (footnote original) EC request, supra  at 10, para. 4.   
33 (footnote original) See supra  at 31. 
34 (footnote original) See para. 41. 
35 (footnote original) The Panel takes note that the European Communities stated that it does not take a 
position as to whether "the requirement of prejudice in Article 6.2 DSU" constitutes an  additional requirement to 
those set out in Article 6.2 of the DSU:  EC request, supra  at 10, para. 66, fn. 25. 
36 (footnote original) See the minutes of those meetings in documents WT/DSB/M/155, para. 75 and 
M/156, para. 32, reproduced in Exhibits EC-2 and EC-3, respectively.  The Panel takes note that the European Communities did not clearly raise any problem concerning the alleged failure of Australia's request to identify 
the specific measures at issue on those occasions. 
37 (corrected footnote original) This does not imply that these issues could not be raised later in the 
proceedings. 
38 See paras. 6, 29 and 48 of the preliminary ruling set out above.  WT/DS290/R 
 Page 21 
 
 
 the panel request, in light of submissions made later during the course of the panel proceeding.  These 
submissions confirm the Panel's ruling as to the mean ing of the words used in  the panel request and 
the Panel's assessment that the ability of the respondent to defend itself was not prejudiced.39   
7.4 First, the Panel recalls that the European Comm unities argued, in its request for a preliminary 
ruling, that:   
"The unspecific reference to Regulation 2081/92 made in the Panel requests does not 
permit the EC to understand which specific aspects among those covered by Regulation 2081/92 the complainants intend to raise in the context of the present 
proceedings."
40 
7.5 The Panel ruled that Article 6.2 did not require the identification of the "specific aspects" of 
the specific measures at issue.41  In any event, after consulting the parties' first written submissions, it 
is clear that the reference to "Regulation No. 2081/ 92, as amended" in the request for establishment of 
a panel did identify certain specific aspects among those covered by the Regulation that the complainant later raised, as follows: 
(a) Australia's principal claims concerning national treatment (considered in 
Section VII:B of this report) are based on  the differences between the two sets of 
registration and objection procedures set out  in Regulation (EEC) No. 2081/92 (the 
"Regulation") in Articles 5 through 7 and 12 through 12d, respectively.
42  This is one 
of the principal features of the Regulation.  It was clear from the request for establishment of a panel that the complain ant intended to raise these aspects of the 
Regulation;  and 
(b) Australia's principal claim concerning the le gal protection for trademarks (considered 
in Section VII:D of this report) is based  on Article 14 of the Regulation.  This 
provision is specifically devoted to that issue.  It was clear from the request for 
establishment of a panel that the complainan t intended to raise this article of the 
Regulation, as the European Communities itself confirmed in its request for a 
preliminary ruling.
43   
7.6 Second, the Panel recalls that the European  Communities submitted in its February 2004 
request for a preliminary ruling that:  
"In the present case, the ambiguity of the Panel request is such that the EC is, to this 
date, not sure of the case which the United States and Australia are bringing before 
                                                      
39 This is consistent with the approach of the Appellate Body in US – Carbon Steel , para. 127. 
40 Quoted at para. 25 of the preliminary ruling set out above. 
41 See para. 11 of the preliminary ruling set out above. 
42 To the extent that the claims concern the actions of EC member State authorities in the verification 
and transmission of applications and objections, the European Communities expressl y referred to these actions 
in its request for a preliminary ruling, supra  at 10, para. 31.  It also inform ed the Panel during this proceeding 
that Community laws are generally not executed through authorities at Community level but rather through 
recourse to the authorities of its member States: see para. 7.148 below. 
43 The claim concerned coexistence under Article 14 (2), subject to Article 14(3).  The European 
Communities expressly referred to both, as well as Article 7( 4), to which it referred in its defence, in its request 
for a preliminary ruling, supra  at 10, paras. 47 and 61.  The only aspect of the Regulation which it raised in this 
respect in its request for a preliminary ruling, that it did not later raise in its defence, was Article 14(1):  see 
Section VII:D of this report.  WT/DS290/R 
Page 22  
 
 the Panel.  As a consequence, the EC has been seriously hampered in its efforts to 
prepare its defence."
44 
7.7 Specifically, with respect to the national treatment claims, it submitted as follows: 
"[T]he US claim is limited to a paraphrasi ng of the treaty language of [Article 3 
TRIPS and Article III:4 GATT].  The US claim does not permit to understand which 
provision or aspect of Regulation 2081/92 is supposed to violate the national 
treatment principle, and in which way such a violation is deemed to occur";  and   
"Like the US claims, Australia's claims [regarding inter alia  national treatment under 
Article 3.1 TRIPS and Article III:4 GATT] are limited to the restatement of language already contained in treaty provisions, and therefore encounter the same objections."
45 
7.8 The Panel's assessment was that the request for establishment of a panel was sufficiently clear 
for the European Communities to begin preparing its defence.46  After consulting the European 
Communities' first written submission, and inform ation submitted by Australia, the Panel is now 
aware that prior to the date of the request for est ablishment of a panel, the European Communities had 
already presented in the Council for TRIPS in September 2002 a statement that responded specifically 
to the argument that national treatment under the TRIPS Agreement applied to geographical 
indications.  In that statement, the European Co mmunities quoted the texts of Article 3 of the TRIPS 
Agreement and Article III:4 of GATT 1994 and argu ed that "[t]hose entitled to rights under TRIPS 
are nationals".  This is also an important defen ce set out in the European Communities' first written 
submission, in which it is argued that "[t]he conditi ons for the registration of geographical indications 
do not depend on nationality".47  This supports the Panel's assessment  that the relevant wording of the 
request for establishment of a panel was sufficien tly clear for the European Communities to begin 
preparing its defence of the first national treatment claim.48 
7.9 Third, the Panel notes that, in any event, Austra lia's other claims (considered in Section VII:E 
of this report), brought under the provisions discuss ed in paragraphs 36 and 39 of the preliminary 
ruling, were not pursued in such detail.  The Pane l has found no prima facie case or rejected all these 
claims.  This confirms the Panel's assessment that  no prejudice has been caused to the rights of the 
respondent by these claims.   
2. Measures no longer in force at the date of establishment of the Panel 
(a) Main arguments of the parties 
7.10 Australia challenges Council Regulation (EEC) No. 2081/9249, including not only the current 
version of that Regulation as in force as at the date of establishment of the Panel50 but also two prior 
versions of the Regulation as originally adopted in 1992 and as amended in 1997.51  Australia's claims 
refer variously to the current version and th ese two prior versions of the Regulation.   
7.11 The European Communities responds that Australia's request for establishment of a panel 
does not make it clear that Australia intends to challenge several versions of the same measure 
                                                      
44 European Communities' request, supra  at 10, para. 68. 
45 Ibid,, paras. 44 and 61. 
46 See para. 41 of the preliminary ruling set out above. 
47 European Communities' first written submission, paras. 114 and 123-126. 
48 See also para. 6.5 above. 
49 Australia's first written submission, para. 20.   
50 Amendment effected by Council Regulation (EC) No. 692/2003, set out in Exhibit COMP-1h.   
51 Australia's first written submission, para. 18, defi nes "Regulation No. 2081/92" "#1", "#2" and "#3".  WT/DS290/R 
 Page 23 
 
 
 resulting from subsequent amendments made over time.  It also submits that the measure at issue is 
the Regulation as in force at the time the Panel was established and that an analysis of historical 
versions is not useful for the purposes of settling the present dispute.52 
(b) Consideration by the Panel 
7.12 The Panel notes that Australia's request for establishment of a panel specifies the Regulation 
as well as "any amendments thereto, (including C ouncil Regulation (EC) No. 692/2003 ...)".  Whilst 
this wording can be read to en compass the original version of the Regulation, and a subsequent 
amended version, which are no longer in force, it is unnecessary to rule on whether those measures 
are within the Panel's terms of refere nce, for the reasons given below.  
7.13 In its submissions, Australia seeks relief in respect  of these prior versions of the Regulation.  
For example, it claims that registration procedures under versions of Articles 7(4) and 14(1) of the 
Regulation, which were deleted and replaced in April 2003, were inconsistent with the TRIPS 
Agreement.53  Australia expressly seeks "rulings and r ecommendations" from the Panel in respect of 
prior versions of the Regulation to the degree nece ssary to establish the extent to which individual 
registrations were inconsistent w ith the covered agreements, and therefore the extent to which those 
registrations continued the alleged violations.  It cites Articles 3.7, 11, 12.7 and 19.1 of the DSU in 
support of its request.54   
7.14 The Panel notes the distinction between provi sions of the Regulation which established 
procedures, but are no longer in force, and individua l registrations effected under them.  With respect 
to the former, the Panel recalls th at its mandate to make recommendati ons in this dispute is found in 
Article 19.1 of the DSU, which foresees only one type of recommendation, namely, that a Member 
bring a measure into conformity with a covered ag reement.  It is obvious that versions of the 
Regulation cannot be brought into conform ity if they have already ceased to exist.55  Therefore, the 
Panel will not make any recommendation with respect to  prior versions of the Regulation that are no 
longer in force.   
7.15 However, individual GI registrations effected unde r prior versions of the Regulation remain in 
force.  There is, in principle, no reason why it should not be possible to challenge them under the 
TRIPS Agreement.  They are measures which may aff ect the operation of that agreement.  Australia's 
request for establishment of a panel specifically identified "[the Regulation and any amendments 
thereto] and related implementing ... measures" as pa rt of the measure at issue.  Registrations under 
Articles 6 and 12b of the Regulation, and under the former Article 17, constitute such implementing 
measures.  Therefore, they are within the Panel's terms of reference.56  Given that they remain in 
force, the Panel can make a recommendation that th e respondent Member bring them into conformity 
with a covered agreement.  Therefore, the Panel ma y examine these individual registrations as part of 
the matter before it.  
7.16 The Panel wishes to note that, in certain respects,  Australia's description of provisions of prior 
versions of the Regulation assists it in understand ing provisions of the current version of the 
Regulation.  For example, the description of Articl es 12 and following of the Regulation prior to its 
amendment in April 2003 assists the Panel in understanding the European Commission's 
                                                      
52 European Communities' first written submission, paras. 13-20.  The European Communities 
addressed the individual registrations on the basis of the preliminary ruling by the Panel but reserved its right to 
raise this issue in the context of a possible appeal:  see its second oral statem ent, para. 105 and fn. 80.  
53 Australia's first written submission, paras. 89 and 86, respectively.   
54 Australia's first oral statement, paras. 13-14 and its response to Panel question No. 88.   
55 This was also the approach of the Appellate Body in US – Certain EC Products , at para. 81. 
56 This is subject to comments in para. 7.26 concerning individual registrations adopted after the date of 
establishment of the Panel.  See also the Panel's conclusion at para. 7.751 below. WT/DS290/R 
Page 24  
 
 contemporaneous explanations of  the Regulation, as discussed in Section VII:B of this report.
57  
Moreover, a description of the Regulation as it stood prior to 1 January 1995 would be essential in 
applying Article 24.3 of the TRIPS Agreement, which refers to a state of affairs "immediately prior to 
the date of entry into force of the WTO Agre ement", according to the European Communities' 
interpretation of that provision, as discussed in Section VII:D of this report.58  Further, a description 
of the simplified registration procedure under the form er Article 17 of the Regulation, which has been 
repealed, demonstrates that there is no evidence that individual registrations effected under that 
procedure involved a denial of national treatment to  persons who wished to object, as discussed in 
Section VII:E of this report.59 
7.17 Therefore, in the course of its assessment of th e matter before it, the Panel will make findings  
with respect to prior versions of the Regulation where they serve some useful purpose in reaching 
conclusions with respect to measure s within its terms of reference,  including individual registrations, 
that are currently in force.  References in this re port to the "Regulation" refer to the current version, 
unless the context indicates otherwise. 
3. Measures adopted after the date of establishment of the Panel 
(a) Main arguments of the parties 
7.18 Australia and the United States submitted, as an exhibit, a copy of Commission Regulation 
(EC) No. 2400/9660, which is effectively the register unde r Article 6 of Council Regulation (EEC) 
No. 2081/92.  Individual designations of origin and geographical indications are added to the register 
by amending the Commission Regulation.  The exhi bit includes amendments made up until the time 
of the first written submissions in this proceeding,  nine of which were adopted after the date of 
establishment of the Panel.  Those nine amendmen ts effected the registrations of 15 individual 
designations of origin and geographical indications.61  
7.19 Australia and the United States also submitted, as an exhibit, an unofficial consolidated 
version of Council Regulation (EEC) No. 2081/92, which included amendments published in the 
Official Journal of the European Communities up until the date of establishment of the Panel.62  The 
latest of these amendments is the Act of Accession  of ten new EC member States.  They also 
submitted, as an exhibit, an extract from that Ac t of Accession which provides for the registration of 
three Czech beer GIs under Article 17 of the Regulation.63 
7.20 Australia challenges individual registrations eff ected under the Regulation and notes that 
registrations are "ongoing".64   
                                                      
57 Exhibit AUS-4 and documents IP/Q2/EEC/1 and IP/C/M/37/Add.1, para. 142 and Annex. 
58 See para. 7.628.  
59 See paras. 7.746 and 7.747. 
60 Exhibit COMP-4. 
61 Exhibit COMP-4b.viii to xvi.  The 15 GIs are "Westlandse druif"; "Alcach ofa de Benicarló" or 
"Carxofa de Benicarló"; "Marrone di San Zeno"; "Mantequilla de l'Alt Urgell y la Cerdanya" or "Mantega de l'Alt Urgell i la Cerdanya"; "Thüringer Leberwurst", "T hüringer Rotwurst", "Thüringer Rostbratwurst"; "Spressa 
delle Giudicarie"; "Fraise du Périgord";  "Queso de Valdeón"; "Ensaimada de Mallorca" or "Ensaimada 
mallorquina"; "Arbroath Smokies"; "C arciofo di Paestum"; "Farina di Neccio della Garfagnana"; "Agneau de 
Pauillac" and "Agneau du Poitou-Charentes".   
62 Exhibit COMP-1a. 
63 Exhibit COMP-3c.  The Czech beer GIs are "Bud ĕjovické pivo", " Českobudĕjovické pivo" and 
"Budĕjovický m ĕšt’anský var".   
64 Australia's first written submission, paras. 20 and 33.   WT/DS290/R 
 Page 25 
 
 
 7.21 The European Communities responds that these measures did not yet exist at the time the 
Panel was established and are therefore outside the term s of reference.  In particular, it submits that 
the Act of Accession was subject to ratificatio n, which was not completed on the date of 
establishment of the Panel, and did not enter into force until 1 May 2004.65   
(b) Main arguments of third parties 
7.22 China argues that the wording of the request for establishment of a panel specified 
amendments to the Regulation and that, therefore, they are properly included in the Panel's terms of 
reference.  The respondent received notice of the inclusion of amendments and had enough 
opportunity to respond to the complainant's case.  It  is irrelevant whether the amendments came into 
effect before or after the Panel was established.66 
(c) Consideration by the Panel 
7.23 The Panel begins by noting that Council Regul ation (EEC) No. 2081/92 (referred to in this 
report as the "Regulation") has not been amended in any relevant respec ts during this panel 
proceeding.  It was last amended in April 2003, prio r to the date of the request for establishment of a 
panel.  
7.24 The Panel's terms of reference include not only the Regulation, but also its "related 
implementing and enforcement measures".  The Pane l considers that this phrase in the request for 
establishment of a panel is broad enough to include individual registrations, for the reasons given in 
paragraph 28 of its preliminary ruling of 5 April 2004, and in paragraph 7.15 above.  The individual 
GIs which are entered in the Register under Artic les 6 and 17 of the Regulation are set out in 
Commission Regulations (EC) No. 2400/96 and No. 1107/96.67  New registrations take the form of 
amendments to these Commission Regulations.  Certain individual registrations were effected after 
the date of establishment of the Panel and prior to the date of the complainants' first written 
submissions68, and registrations continue to be made after that date.   
7.25 Australia's challenge of the individual registrati ons includes those effected after the date of 
establishment of the Panel.  Each of the individual re gistrations applies to a different GI, is used by 
different producers and/or processors and may, in turn , affect rights in different trademarks.  They are 
distinct measures.  Those effected after the date of establishment of the Panel have added to the implementing measures as they stood at that date, a lthough they have not affected the essence of the 
implementing measures vis-à-vis other regi strations as they stood at that date.
69   
7.26 However, Australia has not sought particular re lief in respect of individual registrations 
effected after the date of establishment of the Panel70, as opposed to those effected earlier, and the 
Panel has found no prima facie case in support of the claims in respect of individual registrations 
effected at any time.71  Therefore, the Panel does not consider it necessary to rule on whether the 
individual registrations effected after the date of establishment of the Panel fall within the terms of 
reference in order to secure a positiv e solution to this dispute.   
                                                      
65 European Communities' first written submission, paras. 21-25. 
66 Annex C, para. 96. 
67 Set out in Exhibits COMP-4a and 3a, respectively. 
68 See supra  at 61 and 63 .  
69 This is consistent with the approach of the Appellate Body in Brazil – Aircraft, para. 132 and Chile – 
Price Band System  at paras. 135-144. 
70 Australia's responses to Panel questions Nos. 91 and 93. 
71 See para. 7.751 below.  WT/DS290/R 
Page 26  
 
 7.27 The Panel wishes to note that individual registrati ons effected after the date of the request for 
establishment of a panel can be among the best evidence of the way in which certain provisions of the Regulation itself, which are at i ssue, are interpreted and applied.
72  The Panel therefore refers to them, 
as factual evidence, in the course of its assessment of the matter before it.73  References in this report 
to the "Regulation" refer to the basic Regulati on rather than related a nd implementing measures, 
unless the context indicates otherwise. 
4. Claims under Article 2(2) of the Paris Conven tion (1967), as incorporated by Article 2.1 
of the TRIPS Agreement 
(a) Main arguments of the parties 
7.28 Australia  claims that the Regulation imposes on ot her WTO Member nationals a requirement 
as to domicile or establishment in the European Communities for the enjoyment of rights contrary to 
Article 2(1) and 2(2) of the Paris Convention (196 7) as incorporated by Article 2.1 of the TRIPS 
Agreement.74  In its view, Article 2(2) is an integral aspect of the national treatment obligation under 
Article 2(1).75   
7.29 The European Communities  responds that these claims are outside the Panel's terms of 
reference because they relate to Article 2(2) of the Paris Convention (1967) which was not explicitly 
mentioned in the request for estab lishment of a panel.  Article 2( 2) prohibits the imposition of 
requirements as to domicile or establishment and is therefore different from, and additional to, the 
obligations resulting from the national treatment provision of Article 2(1).76   
(b) Consideration by the Panel 
7.30 The Panel notes that Australia's request for estab lishment of a panel adapts the text of the 
national treatment obligations in Article 3.1 of the TRIPS Agreement and Article III:4 of GATT 1994.  
Australia's request then cites by number both th ose articles as well as Article 2 of the TRIPS 
Agreement "incorporating by reference Artic le 2 of the Paris Convention (1967)". 
7.31 In its submissions to the Panel, Australia claims that certain aspects of the Regulation are 
inconsistent with both Article 2( 1) and 2(2) of the Paris Convention (1967) as incorporated by 
Article 2.1 of the TRIPS Agreement.  The issue fo r the Panel is whether the reference to national 
treatment and to Article 2 of the Paris Convention (1 967) is sufficient to present the legal basis of the 
complaint under Article 2(1) a nd 2(2), or only Article 2(1). 
7.32 The Panel considers that the mere listing of pr ovisions of the relevant covered agreements 
may not satisfy the standard of Article 6.2 of the DSU, for instance, where the listed provisions 
establish multiple obligations rather than one single, distinct obligation.77  However, where the 
multiple obligations are closely related and inter linked, a reference to a common obligation in the 
                                                      
72 In fact, the European Communities itself has included one of these GIs in its exhibits:  the 2002 
publication of the application to register "Thüringer Leberwurst" is Exhibit EC-54. 
73 The Panel refers to the registration of the Czech be er GIs submitted in an exhibit by the complainants 
(see para. 7.18 above) as evidence of the operation of Article 14(3) of the Regulation in paras.7.574 and 7.669. 
74 Australia's first written submission, paras. 189 and 194. 
75 Australia's first oral statement, para. 16. 
76 European Communities' first written submission, paras. 36-42; second oral statement, 
paras. 112-117. 
77 See the Appellate Body report on Korea – Dairy , para. 124.  WT/DS290/R 
 Page 27 
 
 
 specific listed provisions should be sufficient to me et the standard of Article 6.2 of the DSU under 
certain circumstances in a particular case.78 
7.33 Paragraph 1 of Article 2 of the Paris C onvention (1967) expresses a national treatment 
obligation.  Paragraph 2 prohibits local domicile or establishment requirements as a condition for the 
enjoyment of any industrial property rights.  The text s of paragraphs 1 and 2 are linked by the use of 
the conjunction "[h]owever" which indicates that para graph 2 restricts the rule of paragraph 1.  
Paragraph 2 in effect provides that certain conditions  may not be imposed on foreign nationals, even if 
they are imposed on a country's own nationals.79  Paragraph 3 also reserves or excepts certain 
conditions from the national treatment obligation, but by stating certain conditions which may be 
imposed on foreign nationals, even if they are not  imposed on a country's own nationals.  Read in 
context, all three paragraphs either establish a single obligation or are very closely related:  
paragraph 1 sets out an obligation to provide nati onal treatment and paragra phs 2 and 3 limit that 
obligation. 
7.34 Therefore, in the Panel's view, the references in the request for establishment of a panel to 
national treatment and to Article 2 of the Paris Co nvention (1967), which does not specify particular 
paragraphs, as incorporated by Article 2.1 of the TR IPS Agreement, is sufficient to explain the legal 
basis of the complaints under both pa ragraphs 1 and 2 of Article 2.  Accordingly, the Panel rules that 
the claims under Article 2(2) of the Paris Conven tion (1967), as incorporated by Article 2.1 of the 
TRIPS Agreement, are within the Panel's terms of reference. 
5. Claim under Article 4 of the Paris Convention (1967), as incorporated by Article 2.1 of 
the TRIPS Agreement and, consequently, und er Article 24.5 of the TRIPS Agreement  
(a) Main arguments of the parties 
7.35 Australia claims that Article 14(1) of the Regulation does not afford the right of priority in 
respect of trademark applications required to be gr anted by Article 4 of the Paris Convention (1967), 
contrary to Article 24.5 of the TRIPS Agreement.80  In its view, the reference to Article 24.5 of the 
TRIPS Agreement in its request for establishment of a panel permits the Panel to examine the 
consistency of the Regulation with  Article 4 of the Paris Convention (1967) and, indeed, that 
examination is necessary for such a determination.81  It argues that the obligation not to prejudice 
eligibility for the registration of a trademark is plain on a reading of Article 24.5 and, given the 
express obligation on the European Communities to comply with Article 4 of the Paris Convention 
(1967), it was clear that non-compliance with that  provision would constitute prejudice to the 
eligibility for registration of a trademark.  Artic le 6.2 of the DSU should not be interpreted and 
applied in such a way as to require that a co mplaining party must have fully developed its 
argumentation for a dispute before presenti ng its request for establishment of a panel. 82   
                                                      
78 See the Appellate Body report on Thailand – H-Beams , para. 93. 
79 A leading commentator explains the addition of the word "however" as follows: "Even when the 
conditions imposed upon nationals of a country include the stipulation that those nationals can claim protection 
of certain industrial property rights only if they are domi ciled or established in the country, this same stipulation 
cannot be imposed upon nationals of other countries of the Union." in Bodenhausen, Professor G.H.C., Guide to 
the Application of the Paris Convention for the Protection of Industrial Property , United International Bureaux 
for the Protection of Intellectual Property (BIRPI) (1969) (reprinted 1991) ("Bodenhausen"), p. 31.  [Emphasis 
in the original] 
80 Australia's first written submission, paras. 81-87. 
81 Australia's first oral statement, para. 15. 
82 Australia's response to Panel question No. 162;  rebuttal submission, para. 25. WT/DS290/R 
Page 28  
 
 7.36 The European Communities responds that this claim is outside the Panel's terms of 
reference because Australia's request for establishment of a panel did not refer to  Article 4 of the Paris 
Convention (1967).
83   
(b) Consideration by the Panel 
7.37 The Panel recalls that Australia's request fo r establishment of a panel includes the following 
passage:  
"Australia is of the view that the EC measure:   
• diminishes the legal protection for trademarks under the TRIPS Agreement, 
contrary to Articles 1, 2 (incorporating by reference Articles 6 quinques (B), 
10, 10 bis and 10 ter of the Paris Convention (1967)), 16, 20, 24.5, 41 and/or 
42 of the TRIPS Agreement;"   
7.38 It is not disputed that the Panel's terms of reference include the general issue whether the 
Regulation diminishes protection for trademarks cont rary to Article 16.1 of the TRIPS Agreement, 
since that is expressly set out in Au stralia's request for establishment of a panel.  The parties' evidence 
and arguments address in detail the extent to wh ich Article 24.5 prohibits Members from diminishing 
the protection of trademarks in the course of prot ecting geographical indicati ons, and the Panel makes 
detailed findings on this issue in this report.  The reference to Article 24.5 in Australia's request for 
establishment of a panel appears to relate to this issue. 
7.39 It is not disputed that Article 24.5 refers to three aspects of the protection of trademarks, one 
of which is the eligibility of a trademark for regist ration.  This concerns trademark applications.  
However, in the Panel's view, the reference to protection of trademarks and Article 24.5 does not 
necessarily concern each and every possible aspect of trademark application procedures.  Article 15 of 
the TRIPS Agreement and numerous distinct obligat ions under the Paris Convention (1967), including 
Articles 4, 6, 6 bis, 6quinquies and 7 relate to trademark applica tions and procedures.  If a mere 
allegation of diminished protection of trademarks contrary to Article 24.5 of the TRIPS Agreement 
could include the specific obligation to accord priority filing dates fo r trademark applications, it could 
conceivably relate to all of these other distinct obligations as well. 
7.40 The Panel recalls that Article 6.2 of the DSU requires that a request for establishment of a 
panel shall "provide a brief summary of the lega l basis of the complaint sufficient to present the 
problem clearly".  This calls for sufficient clarity with  respect to the legal basi s of the complaint so as 
to enable a defending party to begin preparing its defence.84  Australia's request for establishment of a 
panel makes no mention of the right of priority , or Article 4 of the Paris Convention (1967) as 
incorporated by Article 2.1 of the TRIPS Agreement,  or their relationship with prejudice to trademark 
applications under Article 24.5 of the TRIPS Agre ement.  In that request, the obligation under 
Article 4 of the Paris Convention (1967) is not "express" or implied.  There was simply no way for the European Communities to know that the right of priority under Article 4 of the Paris Convention 
(1967) was at issue.   
7.41 In its first written submission, Australia describ ed why, in its view, Article 14(1) of the 
Regulation covered a situation within the meaning of  Article 24.5.  In order to explain the alleged 
                                                     
 
83 European Communities' first written submission, paras.  28-30;  first oral statement, para. 6.  The 
European Communities also submits that Australia has not clarified this claim, despite a request to do so, and 
that Australia has not identified a single application for a trademark that falls within the situation that Australia 
alleges in this claim:  see European Communities'  rebuttal submission, paras. 356-357.  
84 See the Appellate Body report on Thailand – H-Beams , para. 88.  WT/DS290/R 
 Page 29 
 
 
 inconsistency, it addressed Article 4 of the Paris Conve ntion (1967), "and in pa rticular paragraph B of 
that provision, incorporated by TRIPS Article 2.1" and concluded as follows:   
"Article 14.1 of Regulation No. 2081/93#3 does not afford the right of priority in 
respect of an application for registration of a trademark previously filed in another WTO Member required to be granted by Pa ris Article 4 where that trademark is 
identical with or similar to an EC-defined GI which is later registered.  By not doing 
so, Article 14.1 of Regulation No. 2081/93#3 continues to prejudice, or adversely affect, the eligibility for registration of a tr ademark for which an application has been 
made in good faith, contrary to TRIPS Article 24.5." 
7.42 Australia was not required to disclose its argu ments until its first written submission, but its 
assertion of an inconsistency with Article 4 of the Paris Convention (1967), as incorporated by 
Article 2.1 of the TRIPS Agreement and, conseq uently, Article 24.5 of the TRIPS Agreement, 
amounts to a claim under Article 4, which should have  been disclosed in the request for establishment 
of a panel.  The inclusion of this claim for the first time in the first written submission took the 
European Communities by surprise and deprived it of the right to begin preparing its defence to this 
claim earlier.   
7.43 Therefore, in this respect, the request for establishment of a panel does not satisfy the 
requirement of Article 6.2 to "provide a brief summary  of the legal basis of the complaint sufficient to 
present the problem clearly".  Accordingly, this clai m is outside the Panel's terms of reference.   
6. Claim under Article 41 in conjunction with Articles 43, 44, 45, 46, 48 and 49 of the 
TRIPS Agreement 
(a) Main arguments of the parties 
7.44 Australia argues in its first written submission th at the European Communities has not 
ensured that enforcement procedures as specified in  Part III of the TRIPS Agreement are available 
under its law, contrary to Article 41.1 of the TRIPS Agreement, as a consequence of inter alia  the fact 
that the Regulation does not grant the Consultativ e Committee the authority required by Articles 43, 
44, 45, 46 and 48 of the TRIPS Agreement, and does not provide judicial authorities with the 
authority required by Articles 43, 44, 45, 46, 48 and 49.
85  Australia submits that the reference to 
Article 41 of the TRIPS Agreement in its request for establishment of a panel permits the Panel to 
examine the consistency of the Regulation with Arti cles 43 to 49 respectively and, indeed, that such 
an examination is necessary for such a determination.86   
7.45 The European Communities responds that this amounts to a claim under Articles 43 to 49 of 
the TRIPS Agreement not mentioned in the request  for establishment of a panel and is therefore 
outside the Panel's terms of reference.  The refere nce to Article 41 in the request for establishment of 
a panel is not sufficient to specify Articles 43 to 49 and, more specifically, Article 41.1 is a purely introductory provision which does not create separate legal obligations.
87   
(b) Consideration by the Panel 
7.46 The Panel recalls that Article 6.2 of the DSU requires that a request for establishment of a 
panel shall "provide a brief summary of the lega l basis of the complaint sufficient to present the 
                                                      
85 Australia's first written submission, para. 148. 
86 Australia's first oral statement, para. 15. 
87 European Communities' first written submission, paras. 31-35. WT/DS290/R 
Page 30  
 
 problem clearly".  This calls for sufficient clarity with  respect to the legal basi s of the complaint so as 
to enable a defending party to begin preparing its defence.
88   
7.47 The Panel recalls that in its preliminary ruling dated 5 April 2004, reproduced above, it 
considered the relationship between Article 41, wh ich is specifically identified in the request for 
establishment of a panel, and the enforcement pro cedures in Part III of the TRIPS Agreement, in 
particular, in Article 42, which is also specifically identified in that request.  The Panel did not rule 
that Article 41 was clearly within the terms of refere nce in all respects.  After consulting the parties' 
first written submissions, it is clear that the releva nt references in the request for establishment of a 
panel did not identify all the claims that Australi a subsequently raised.  Australia's request for 
establishment of a panel does not refer to Articles 43 , 44, 45, 46, 48 or 49 or the other provisions of 
Part III.  The textual link in the TRIPS Agreement between Article 41 and the other articles of Part III 
is found in paragraph 1 of Article  41, which provides that "Members shall ensure that enforcement 
procedures as specified in this Part are availa ble under their law ...".  Australia's request for 
establishment of a panel does not indicate which of these other enforcement procedures are at issue, 
does not cite this text, nor does it refer sp ecifically to paragraph 1 of Article 41. 
7.48 The Panel considers that Article 41.1 imposes an  obligation.  The language of that provision 
is expressed in terms of what Members "shall" ensu re and is not hortatory.  The substance of the 
provision adds qualitative elements to the procedures sp ecified in Part III through use of terms such as 
"effective", "expeditious" and "dete rrent" and is not redundant.  Howe ver, it was not possible for the 
European Communities to know from the request fo r establishment of a panel that the claim under 
Article 41 put in issue the procedures required under any of Articles 43 through 49.  The inclusion of 
a claim in Australia's first written submission under Article 41 of the TRIPS Agreement in 
conjunction with Articles 43, 44, 45, 46, 48 and 49  took the European Communities by surprise and 
deprived it of the right to begin preparing its defence of this claim earlier.   
7.49 Therefore, in this respect, the request for establishment of a panel does not satisfy the 
requirement of Article 6.2 to "provide a brief summary  of the legal basis of the complaint sufficient to 
present the problem clearly".  Accordingly, the claim under Article 41 of the TRIPS Agreement in 
conjunction with Articles 43, 44, 45, 46, 48 and 49 is outside the Panel's terms of reference. 
7.50 In any event, the Panel rejects all of Austra lia's claims under Articles 41 and 42 of the TRIPS 
Agreement, for the reason given in paragraph 7.731 of  this report, which applies with equal force to 
all grounds on which these clai ms were purportedly made.  
7.  Claim under Article 20 of the TRIPS Agreement 
7.51 Australia includes in its request for establishment of a panel a claim that the Regulation 
diminishes the legal protection of trademarks cont rary to Article 20 of the TRIPS Agreement.  It 
presents arguments in support of that  claim in its first written submission.89 
7.52 The European Communities  responds that the Regulation is not  inconsistent with Article 20 
of the TRIPS Agreement.90  
7.53 In its second oral statement, Australia wit hdrew its claim under Article 20 of the TRIPS 
Agreement.91  Therefore, the Panel does not consider this claim any further. 
                                                      
88 See the Appellate Body report on Thailand – H-Beams , para. 88. 
89 Australia's first written submission, paras. 108-112.   
90 European Communities' first written submission, paras. 345-351.  
91 Australia's second oral  statement, para. 99.  WT/DS290/R 
 Page 31 
 
 
 8. Claims under Article 4 of the TRIPS Ag reement, Article I:1 of GATT 1994 and 
Article 2.1 of the TBT Agreement 
7.54 Australia includes in its request for establishment of  a panel claims that the Regulation is 
inconsistent with the MFN treatment obligations in Article 4 of the TRIPS Agreement, Article I:1 of 
GATT 1994 and Article 2.1 of the TBT Agreement.  
7.55 In its first written submission, Australia "reser ves the right" to pursue these claims in the 
event that the European Communities is applying protection under the Regulation to GIs from another 
WTO Member or begins to do so.92  Australia did not pursue these claims.  Therefore, the Panel does 
not consider them any further. 
9. Claim under Articles 1, 63.1 and 63.3 of the TRIPS Agreement 
7.56 Australia includes in its request for establishment of  a panel a claim that the Regulation is 
not applied in a transparent manner contrary to Ar ticles 1, 63.1 and 63.3 of the TRIPS Agreement.   
7.57 In its first written submission, Australia "r eserves the right" to pursue the claim under 
Articles 63.1 and 63.3 in the event that the European  Communities should in fact have in place criteria 
and/or guidelines for the purposes of making assessm ents and/or determinations under "various 
provisions" of the Regulation.93  Australia did not pursue the claim regarding transparency under 
Articles 1, 63.1 or 63.3 of the TRIPS Agreement.   Therefore, the Panel does not consider it any 
further. 
10. Claim regarding application pro cedures under the TRIPS Agreement 
7.58 The European Communities submits that Australia has not made a claim concerning the 
application procedures under the TR IPS Agreement but only under GATT 1994.94  It does not indicate 
the reasons for its view. 
7.59 Australia replies that it makes its claim in relati on to the application procedures under the 
TRIPS Agreement as well and refers to passages in its first written submission.95 
7.60 The Panel has reviewed the passag es in Australia's first written submission, to which it refers.  
They appear under a heading which refers expressl y to "national treatment" and specific national 
treatment provisions of the TRIPS Agreement.  They include the following statements: 
"198. However, non-EC nationals seeking to  register, and thus protect, an EC-
defined GI in respect of a geographical location in the territory of another WTO 
Member pursuant to Regulation No. 2081/92 ar e not able to apply directly to the EC 
(whether to the Commission or another Co mmunity level body) to register an EC-
defined GI.   
(...)   
"205. Moreover, notwithstanding any outward appearance of symmetry of 
treatment, the EC measure accords non-EC nationals less favourable treatment than that accorded to EC nationals in respect of  the registration of an EC-defined GI from 
                                                     
 
92 Australia's first written submission, para. 65;  noted by the European Communities in its first written 
submission, para. 227, fn. 108 and para. 239, fn. 112.    
93 Australia's first written submission, para. 66.   
94 European Communities' first written submission, para. 127; and its rebuttal submission, para. 122.   
95 Australia's first oral statement, para. 34, citing its first written submission, paras. 198-199 and 205.  WT/DS290/R 
Page 32  
 
 another WTO Member and in respect of the enforcement of trademark rights 
concerning the proposed registration of an EC -defined GI.  The fact that the EC and 
its Member States have legally defined right s and obligations in relation to each other 
and to EC Member State nationals makes the registration and objection processes for EC nationals fundamentally different to those for non-EC nationals.  Few other WTO 
Member governments have such legally  defined relationships affecting the 
maintenance and enforcement of an inte llectual property right, a right expressly 
recognised as a private right by the TRIPS Agreement ."   
7.61 The Panel considers that the cl aim in respect of the application procedures under the TRIPS 
Agreement, whilst it could have been expressed more clearly, does appear in these passages in 
Australia's first written submission.  The referenc es to persons seeking to register a GI, or the 
proposed registration of a GI, include the applicatio n procedures.  The submission refers expressly to 
the lack of direct applications for non-EC nationals  and the obligations of EC member States in the 
registration process, which are the basis for this claim.  Any doubts which the European Communities 
had in this respect should have been dispelled by  Australia's express confirmation in its first oral 
statement that it had made this argument in support of its claim that the measure as a whole does not 
accord national treatment to non-EC nationals.  A respondent that chooses not to respond to a claim 
does so at its own risk. 
7.62 The European Communities has suffered no prejudice  to its ability to defend itself, because it 
has responded to overlapping claims presented by Australia based on the same aspects of the 
application procedures under GATT 1994 and the op position procedures based on the same obligation 
under the TRIPS Agreement, as well as the same cl aim as made by the United States based on the 
same aspects of the application procedures under GATT 1994.  
7.63 For these reasons, the Panel will consider this claim.
96  
11. Claim regarding the labelling requirement under GATT 1994 
7.64 Australia claimed in its first written submission that the labelling requirement in 
Article 12(2) of the Regulation was inconsistent with  Article 2.1 of the TBT Agreement, but it did not 
claim at that time that it was inconsistent with Article III:4 of GATT 1994.97  
7.65 The European Communities  responded to Australia's claim in its first written submission, 
arguing that Article 12(2) of the Regulation did not constitute a technical regulation within the 
meaning of Annex 1.1 of the TBT Agreement and was not otherwise incompatible with Article 2.1 of 
the TBT Agreement.  It responded to the United States ' claim that Article 12(2) was inconsistent with 
Article III:4 of GATT 1994 and noted  that Australia did not make such a claim in this regard.98 
7.66 In its rebuttal, Australia submitted that, should the Panel cons ider that Article 12(2) of the 
Regulation did not constitute a t echnical regulation within the m eaning of Annex 1.1 of the TBT 
Agreement, it nevertheless accorded treatment less favourable to imported pr oducts inconsistently 
with Article III:4 of GATT 1994.99   
                                                      
96 See paras. 7.276 and following below. 
97 Australia's first written submission, paras. 157-180 and 264. 
98 European Communities' first written submission, paras. 437-457, 469-482, 209 and fn. 100. 
99 Australia's rebuttal submission, para. 179.  WT/DS290/R 
 Page 33 
 
 
 7.67 In its second oral statement, the European Communities maintained that Australia had 
challenged Article 12(2) of the Regulation under Article 2.1 of the TBT Agreement and that the 
United States had challenged it under Article III:4 of GATT 1994.100 
7.68 The Panel notes that Australia only asks the Panel to address Article 12(2) of the Regulation 
under Article III:4 of GATT 1994 should the Panel c onsider that Article 12(2) does not constitute a 
technical regulation within the meaning of Annex 1.1 of the TBT Agreement.  This premise has not 
been met and further consideration is therefore unnecessary.101   
12. Endorsement of arguments by another complainant 
7.69 Australia , in its opening statement at the first subs tantive meeting with the Panel, formally 
endorsed certain comments made by the United Stat es.  These were "those comments concerning the 
rights required to be granted in respect of trademar ks" and "the comments made by the United States 
concerning the EC's national treatment obligatio ns under the TRIPS Agreement and GATT 1994".  
Australia also offered "additional comments" in its first oral statement.102   
7.70 The Panel understands that these endorsements re fer to comments made by the United States 
in its first opening oral statement.  By virtue of  these endorsements, the refe renced comments of the 
United States form part of Australia's case.  This was confirmed in Australia's opening statement at 
the second substantive meeting as follows: 
"Our case in total would include of course all  the material we have submitted to the 
Panel directly, or via endorsement of argum ents made by the US in this dispute."103 
7.71 However, the next day, in its closing stat ement, the representative of Australia said the 
following:   
"Australia endorses all of the arguments put  forward by the United States.  Where 
there are differences between the compla inants, these are a result of different 
understandings of the flawed measure at issue in this dispute and, in any case, are not 
material differences."104 
7.72 The European Communities  objected orally during the same meeting.  It informed the Panel 
that it did not know which particular argumen ts Australia was endorsing because at times the 
United States' arguments contradicted Australia's ar guments.  Further, an ove rall endorsement did not 
respect its rights of defence.   
7.73 The Panel notes, by way of illustration, the following examples provided by the European 
Communities of differences between the arguments presented by Australia and the United States.  
First, Australia had argued as follows with respect to the interpretation of Article 24.5 of the TRIPS 
Agreement: 
                                                      
100 European Communities' second oral statement, para. 129. 
101 See para. 7.459 below. 
102 Australia's first oral statement, paras. 30 and 33. 
103 Australia's opening statement at the second substantive meeting, para. 2. 
104 Australia's closing statement at the second substan tive meeting, second paragraph.  In its comments 
on the descriptive part of this report, it requested that paragraph 2.15 be elaborated to make clear that Australia 
made this endorsement. WT/DS290/R 
Page 34  
 
 "[T]he right to use a trademark refers to  the ongoing ability to use a trademark where 
rights to a trademark have been acquired through use in good faith."
105   
7.74 In its closing statement, Australia said that it endorsed arguments which include the 
following: 
"'[T]he right to use a trademark' is not speci fically limited in the text to trademarks 
whose rights are acquired through use (although it would appear to include such 
trademarks).  Rather the obligation not to prejudice the right to use a trademark – to 
harm or damage the permitted or forbidden activity associat ed with application of a 
trademark to its purpose – would include an obligation with respect both to registered and non-registered trademarks (...)"
106 
7.75 Australia's endorsement in its closing statement does not enable the Panel to ascertain the case 
that Australia asks it to consider on this key point  (considered in Section VII:D of this report). 
7.76 Second, when the Panel asked Australia whet her it alleged that Article 12(2) of the 
Regulation provides any less favourable treatment to imported products besides labelling costs, 
Australia replied "No."107  In its closing statement, Australia said that it endorsed arguments which 
included the following:  
"The requirement of Article 12(2) that  GIs for imported products, but not for 
domestic products, must be accompanied by a clear and visible indication of country of origin on the label is not simply a labe ling cost issue.  This requirement provides 
less favorable treatment to non-EC nationals and products in part because the non-EC 
GI, unlike the EC GI, is being burdened by an additional labeling requirement that is 
in the nature of a qualifier that detracts from the value of the GI (...)"
108 
7.77 Australia's endorsement in its closing statement does not enable the Panel to ascertain the case 
that Australia asks it to consider on this point (consid ered in Section VII:B of this report).  By way of 
further illustration, the Panel notes that the United States has presented arguments in support of its 
MFN claims which Australia chose not to pursue af ter the establishment of the Panel (mentioned in 
Section VII:A of this report).   
7.78 Therefore, the Panel does not agree with Australia that there are no material differences 
between the complainants' respec tive cases.  Australia's endorsement in its closing statement was 
sweeping and unlimited.  More information was require d in order to explain how it related to parts of 
Australia's case as presented prior to the end of the second substantive meeting with the Panel.   
7.79 The Panel has examined the parties' arguments in the course of its assessment of the matter 
before it.  However, it is not part of the Panel's f unction to participate in making a party's case, as this 
would compromise its duty to make an objective a ssessment.  The Panel should not have to sift 
Australia's and the United States' respective argumen ts and make an assessment of where there are 
possible contradictions, where there is possible support for a claim and where the United States' 
arguments are irrelevant to Australia's claims, simp ly in order to establish what case Australia wished 
to bring.  Further, the European Communities, as the respondent, is entitled to know the case that it 
has to answer from each complainant.  It is una ble to know with certainty what Australia's case 
actually is in the final analysis, as regards the endo rsement in the closing statement.  Australia bore 
                                                      
105 Australia's response to Panel question No. 76. 
106 United States' response to Panel question No. 76. 
107 Australia's response to Panel question No. 52. 
108 United States' response to Panel question No. 120.  WT/DS290/R 
 Page 35 
 
 
 the responsibility to make its own case clear a nd, as regards the arguments covered by this 
endorsement, it has failed to discharge that responsibility. 
7.80 The lateness of this endorsement also raises an  issue of due process.  Whilst the overlapping 
nature of the claims presented by the two complain ants is a particular feature of this dispute, a 
respondent may choose to defend certa in arguments in support of one cl aim, but not others.  After the 
enlargement of one complainant's case at the end of the second substantive meeting, the respondent 
may understandably wish to respond to certain arguments for the first time .  However, at that stage, it 
only has the opportunity to respond to written questi ons and comment on the ot her parties' responses, 
which may provide insufficient opportunity to respond to those arguments.  This could compromise the respondent's ability to defend itself against each complainant.  
7.81 There are no relevant specific circumstances in th is proceeding to take into account.  Australia 
had ample opportunity to make its case.  It did not endorse all the United States' arguments earlier 
when it endorsed specific comments, either at the firs t substantive meeting or in its opening statement 
at the second substantive meeting.   
7.82 Accordingly, the Panel does not consider that Au stralia's statement that it endorsed all of the 
United States' arguments was a suffici ent basis for the Panel to consider  that Australia's arguments as 
presented earlier were modified.  Nevertheless, the Panel accepts Australia's earlier endorsements of 
certain comments of the United St ates, as described in paragraphs 7.69-7.70above, and takes note of 
the referenced comments. 
13. Exhibits containing legislation of other Members 
7.83 Australia  requests that the Panel reject six exhibits submitted by the European Communities 
which consist of extracts of legislation of Australia and two third parties.  This request is made on the 
grounds that the exhibits are allegedly not relevant.
109   
7.84 The Panel does not consider it appropriate to remove these exhibits from the record.  They 
form part of the respondent's submission.  To the ex tent that they lack evidentiary worth, they will 
suffer from that defect and the Panel will disregard them.  
14. Request by a third party for a suggestion on ways to implement a recommendation 
7.85 Mexico considers that "cochineal" should be remove d from the list of products covered by the 
Regulation set out in its Annex II.  As a third pa rty, Mexico does not submit this as a claim, but 
requests that the Panel make a suggestion to this effect pursuant to the second sentence of Article 19.1 
of the DSU.  Mexico argues that there is no require ment that a request for such a suggestion must be 
forwarded by one of the parties.  If the Panel does not deem it appropriate to make such a specific 
suggestion, the same result would be achieved by a suggestion that the European Communities 
withdraw the Regulation.110 
7.86 The Panel takes note of Mexico's request.  The issue of the product coverage of the 
Regulation is not challenged by the claims in this di spute and is therefore outsi de the Panel's terms of 
reference.  However, Mexico's attenti on is drawn to Article 10.4 of the DSU. 
                                                      
109 Australia's second oral statement,  para. 104.  Australia also requests that the Panel exclude these and 
other exhibits submitted by the European Communities cons isting of extracts of legislation of other Members, 
on the grounds that it has failed to establish the meaning of  the legal provisions within the legal order of those 
Members:  see Australia's comments on the EC's responses to questions, paras. 2-4.  This does not concern the record of the proceedings and can be  dealt with, if necessary, in the consideration of the relevant claim. 
110 Annex C, para. 117. WT/DS290/R 
Page 36  
 
 15. Order of analysis of claims 
7.87 The claims in this dispute are made under the TRIPS Agreement, GATT 1994 and the TBT 
Agreement.  Certain claims under the TRIPS Agre ement and GATT 1994 relate to the same aspects of 
the measure at issue.
111  There is no hierarchy between these two agreements, which appear in 
separate annexes to the WTO Agreement.  One logi cal approach would be to begin in each instance 
with the TRIPS Agreement.  The Panel will follow that order of analysis in this report.   
7.88 The Panel will consider the claims relevant to each aspect of the m easure in turn.  The 
following sections of the findings are organized as follows:   
 – Section B National treatment claims 
 
 – Section C Trade-restrictiveness claim 
  – Section D Trademark claims    – Section E Other claims 
 
B. N
ATIONAL TREATMENT CLAIMS  
1. Availability of protection 
(a) Do the conditions in Article 12(1) of the Regulation apply to WTO Members? 
(i) Main arguments of the parties112 
7.89 Australia  claims that GIs (as defined in the Regulation) located in the territory of a WTO 
Members outside the European Union can only be registered under the Regulation if the Member 
government in whose territory the GI is located is able and willing to meet the conditions in 
Article 12(1), which require it to adopt a system for GI protection that is equivalent to that in the 
European Communities and provide reciprocal  protection to products from the European 
Communities.113  It specifically endorses comments made by the United States in its first oral 
statement concerning the European Communities' national treatment obligations under the TRIPS 
Agreement and GATT 1994.114   
7.90 Australia argues that the Eur opean Communities had consistently led other WTO Members to 
believe that Article 12(1) of the Regulation ap plied to them.  It argues that the European 
Communities' interpretation of the Regulation doe s not invalidate the meaning of the provisions 
submitted by Australia, and is not supported by the text of Articles 12 to 12d, which only distinguish 
between nationals of WTO Members and other third countries where the express language so 
provides.  The Regulation would not be interpreted by  the European Court of Justice in light of the 
                                                      
111 In its rebuttal, Australia also referred to a claim under GATT 1994 as an alternative to one of its 
claims under the TBT Agreement.  The Panel's approach to this issue is discussed in paras. 7.64-7.68. 
112 The Panel's citations of parties' submissions in th is report are not exhaustive.   At times, parties' 
positions are elaborated in other submissions and response s to questions which are attached in full in Annexes A 
and B to this report. 
113 Australia's first written submission, paras. 165-168, 172-173 and 199. 
114 Australia's first oral statemen t, para. 33.  The United States' first oral statement included inter alia  
comments that Article 12(1) does not suggest that WTO Members are excluded from its conditions and 
Article 12a sets out the sole process under the Regulation fo r the registration of non-EC GIs.  If the conditions in 
Article 12(1) do not apply to WTO Members, then they  may not be recognized under Article 12(3) and the 
Article 12a procedure is still not available for them.    WT/DS290/R 
 Page 37 
 
 
 European Communities' internati onal obligations because it does not state that it is intended to 
implement a particular GATT 1947 or WTO obligation.115  Australia understands that the introductory 
phrase "[w]ithout prejudice to international agreemen ts" was intended to allow for an international 
agreement – whether bilateral or plurilateral – to incorporate different conditions but it does not, and 
was not intended to, incorporate the Europ ean Communities' oblig ations under the WTO 
Agreement.116 
7.91 Australia argues that the Panel is not bound by  the European Communities' interpretation of 
its own measure to any extent.  The Panel's obligat ion is to appraise whether that interpretation is 
supported by the text of the Regulati on, having regard to a ll relevant factors including the plain text of 
the relevant provisions, the European Communities' prev ious explanations of their meaning, its failure 
to explain inconsistencies in its new interpreta tion and the fact that the statements of EC 
representatives to the Panel do not create new legal obligations in Community law.117   
7.92 The European Communities  responds that the conditions in Article 12(1) of the Regulation 
do not apply to geographical areas located in  WTO Members.  The introductory phrase of 
Article 12(1) provides that it applies "[w]ithout prejudice to international agreements" – which 
include the WTO agreements.  This is made clear by the eighth recital of the April 2003 amending 
Regulation which took specific account of the pr ovision of the TRIPS Agreement.  WTO Members 
are obliged to provide protection to geographical i ndications in accordance with Section 3 of Part II 
and the general provisions and basic principles of the TRIPS Agreement.  For this reason, 
Article 12(1) and 12(3) do not apply to WTO Members.  Accordingly, the registration of GIs from other WTO Members is subject to exactly the same conditions as the registration of GIs from the  
European Communities.
118 
7.93 The European Communities argues that the procedure under Article 12a of the Regulation is 
not limited to the cases covered by Article 12(3).  Th e term "third country" in Articles 12 through 12d 
does or does not include WTO Members depending on the wording, context and objectives of each 
specific provision.  The evidence of prior statements  by Community officials does not contradict the 
European Communities' interpretati on in this Panel proceeding and mo re recent statements support it.  
The statements made by the agents of the Eur opean Commission before the Panel commit and engage 
the European Communities but their intention is not to create new legal obligations in public 
international or in Community law.  They are made on behalf of the European Communities as a 
whole and not only the Commission.  Community legisl ation must, so far as possible, be interpreted in 
a manner that is consistent with international la w, in particular where its provisions are intended 
specifically to give effect to an international ag reement concluded by the Community, as indicated by 
the phrase "[w]ithout prejudice to international agreem ents".  An interpretation that limited that phrase 
to bilateral agreements would larg ely deprive it of its useful value.119 
7.94 The European Communities does not consider that the Panel is "bound" by the EC's 
interpretation of its own measure.  However, it s ubmits that the Panel must take due account of the 
fact that the Regulation is a measure of EC domestic law and establish its meaning as a factual 
element.  This means that: (1) the burden of proof  is on the complainant to establish the meaning of 
the measure.  Given that the claim in th e present dispute is based on the measure per se and not as 
                                                      
115 Australia's first oral statement, paras. 18-23; rebuttal submission, paras. 33-49; second oral 
statement, paras. 3-9. 
116 Australia's response to Panel question No. 6. 
117 Australia's response to Panel question No. 1; rebuttal submission, paras. 69-71. 
118 European Communities' first written submission, para s. 62-67; first oral statement, paras. 41-44; 
rebuttal submission, para. 52. 
119 European Communities' responses to Panel questions Nos. 7, 8, 15 and 16; rebuttal submission, 
paras. 11, 58-60 and 71-87;  second oral statement, paras. 45 and 50.   WT/DS290/R 
Page 38  
 
 applied, the complainant must establish "beyond doubt " that the measure entails a violation; (2) in 
making an objective assessment of the facts and the in terpretation of the measure, the Panel should be 
guided by the rules of interpretation customary in th e EC's domestic legal order; and (3) it is the EC's 
authorities who must interpret and apply the measure  and therefore its explanations must be given 
considerable deference.
120   
(ii) Main arguments of third parties 
7.95 Argentina asserts that the conditions of equivalence and reciprocity apply to GIs located in 
all third countries.  It is unconvinced by the Europ ean Communities' explanation of its measure.  If its 
intention had been to distinguish between WTO Members and other third countries, it could have done so more explicitly.
121 
7.96 Brazil asserts that the conditions of equivalence and reciprocity apply to GIs located in all 
third countries.  It considers that the European Commission's interpretation of the phrase "without prejudice to international agreements" would not necessarily withstand scrutiny by a judicial body and is unlikely given that the provisions that refer to "t hird countries" would have been drafted with only a 
handful of non-WTO Members in mind.  The referen ce in Article 12(2) indicates that third countries 
means all third countries outside the European Co mmunities, although in Articles 12a(2) and 12d(1) it 
could mean non-WTO Members.  The EC's interpretation could a contrario indicate a recognition that 
the equivalence and reciprocity conditions violat e national treatment obligations in GATT 1994 and 
TRIPS.
122 
7.97 Canada considers that Article 12 of the Regulation, read in context with Articles 12a, 12b 
and 12d, cannot support the interp retation advanced by the European Communities.  The ambiguous 
reference to "international agreements" is insufficien t to counter the clear wording.  There would not 
appear to be an alternative le gal basis for filing applications for countries outside the European 
Communities besides Article 12 due to the wording of  Article 12a(1).  Artic les 12b and 12d refer to 
"WTO Members" and "third countries" which suggest s no differential application to "third countries" 
in Articles 12 and 12a.  The European Communities indicated that Article 12 applied to all WTO 
Members in a statement in September 2002 to the Council for TRIPS.123 
7.98 China argues that the European Communities' in terpretation is not accompanied by any 
supporting evidence and that there is no regulatory la nguage in the provisions to exclude expressly the 
application of these provisions to WTO Members.  The preamble to the April 2003 amending Regulation refers specifically to WTO Members in relation to the right of objection, but does not 
exclude WTO Members from the equivalence and r eciprocity conditions.  Had the drafters intended 
that it should not apply, they would have inserted a clause to that effect in the preamble.  The 
European Communities appears to have admitted that portions of Article 12, regarding product 
specifications and inspection,  do apply to WTO Members.
124  
7.99 Colombia submits that, if the European Communities'  interpretation of "without prejudice to 
international agreements" is correct , the Panel should recommend that it modify its legislation in such 
a way that that phrase acquires the scope and meaning that are assigned to it in the EC's first written 
submission.125 
                                                      
120 European Communities' response to Panel questio n No. 1; second oral statement, paras. 5-7. 
121 Annex C, para. 17. 
122 Annex C, paras. 23-24. 
123 Annex C, paras. 47-50. 
124 Annex C, para. 72. 
125 Annex C, para. 99.   WT/DS290/R 
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 7.100  Mexico submits that the language of Article 12( 1) of the Regulation is precise and 
unequivocal.  Third countries must satisfy conditions  of equivalence and reciprocity in order to 
receive the same protection as EC member States.126   
7.101  New Zealand submits that the European Communities' interpretation of Article 12(1) and (3) 
and the phrase "without prejudice to international agreements" is novel and does not withstand close 
scrutiny.  It runs counter to the usual meaning of that phrase and effectively admits that requiring 
nationals of WTO Members to satisfy the procedures in Article 12(1) and (3) would be contrary to 
WTO obligations.  It is inconsistent with the word ing of the Regulation itself and, if Article 12(3) 
does not apply to WTO Members, then the applica tion procedure in Article 12a would not either.  
This is the first time that this interpretation h as been raised by the Eu ropean Communities.  The 
alternative interpretation adopted by the complain ant is consistent with the wording of the 
Regulation.127 
7.102  Chinese Taipei  asserts that the conditions of equivalence and reciprocity apply to GIs located 
in all third countries.128   
(iii) Consideration by the Panel  
7.103  The first issue in this dispute concerns th e conditions for registration of GIs under the 
Regulation.  It is not disputed that a GI locat ed outside the European Communities has never been 
registered nor the subject of an application made  under the Regulation, and that no attempt has ever 
been made to file an application to register such a GI under the Regulation.129  Therefore, the 
provisions concerning the protection of such GIs have  never been applied in a particular instance.  
However, Australia challenges this aspect of the Regulation "as such". 
7.104  The parties agree that the conditions set out in Article 12(1) of the Regulation do not apply to 
the protection of GIs located within the territory of  the European Communities.  They disagree as to 
whether they apply to the protection of GIs located  in other WTO Members.  Australia claims that 
they do so apply, and it is not disputed that th e European Communities never made a clear statement 
that these conditions did not so apply prior to this panel proceeding.  However, the European 
Communities responds in its submissions to the Pane l that the conditions only apply to third countries 
that are not WTO Members.  
7.105  The European Communities' position, as expressed in its submissions to the Panel, has been 
welcomed in principle by the complainants and by two third parties.130  If Australia were satisfied 
with this position, it would provide a positive solution to many of the national treatment claims in this 
dispute.  However, Australia is not persuaded that the European Communities would be able to 
implement the position that it has presented to the Pane l in light of the terms of the Regulation on its 
face, allegedly prior inconsistent statements by the European Communities in the Council for TRIPS, 
the Commission's Guide to the Regulation and elsewhe re, and inconsistent st atements made during 
this Panel proceeding by the European Communities.131  Australia submits that only formal 
amendments of the provisions of the Regulati on could ensure their interpretation in a manner 
                                                      
126 Annex C, para. 110. 
127 Annex C, paras. 126-128. 
128 Annex C, paras. 171-172. 
129 See the parties' respective responses to Panel ques tions Nos. 11 and 12 and third party comments in 
Annex C.  For the sake of brevity, the Panel refers to a name that refers to a geographical area located in a 
Member as a GI located in that Member. 
130 See para. 7 of the United States' first oral statem ent, endorsed by Australia, first oral statement, 
para. 33, and summaries of arguments of Brazil and Canada, Annex C, paras. 24 and 47.   
131 Australia's first oral statement, para. 19;  rebuttal submission, paras. 32-49. WT/DS290/R 
Page 40  
 
 consistent with the Europ ean Communities' obligations.
132  Therefore, although the European 
Communities submits that the Regulation already is in  conformity with its ob ligations, the Panel is 
obliged to proceed with its assessment of the natio nal treatment claims based on Article 12(1) of the 
Regulation. 
7.106  The fact that this is an "as such" challenge, and that the parties disagree sharply on whether 
the European Communities' interpretation of its ow n measure is correct, requires the Panel to conduct 
a detailed examination of the Regulation.  In doi ng so, the Panel examines the Regulation solely for 
the purpose of determining its conformity with  relevant obligations under the WTO covered 
agreements.133  Although the Regulation is part of the European Communities' domestic law, the 
parties agree that the Panel is not bound by th e European Communities' interpretation of its 
provisions.134  Rather, the Panel is obliged, in accordan ce with its mandate, to make an objective 
assessment of the meaning of the relevant provisions of  the Regulation.  In this context, the Panel is 
mindful that, objectively, a Member is normally well placed to explain the meaning of its own law.  To the extent that either party advances a particular  interpretation of a provision of the Regulation at 
issue, it bears the burden of proof that its interpretation is correct.   
7.107  Turning to the Regulation, the Panel notes that it applies to the registration of "designations of 
origin" and "geographical indications", as defined.
135  For ease of reference, and without prejudice to 
their consistency with the definition of a geogr aphical indication in Article 22.1 of the TRIPS 
Agreement, we shall refer to them both as "GIs" in this report, except where the context requires 
otherwise. 
7.108  Certain facts are agreed.  The parties agree that the Regulation contains two sets of detailed 
procedures for the registration of GIs for agricultura l products and foodstuffs.  The first procedure, in 
Articles 5 through 7, applies to the names of geographical areas locat ed in the European 
Communities.136  It has been part of the Regulation since its adoption in 1992, although it has been 
amended subsequently in certain respects.  The second procedure, principally found in Articles 12a 
and 12b, applies to the names of geographical areas located in third countries outside the European 
Communities.137  It was inserted in the Regulation in April 2003.  A third procedure for registration of 
GIs protected under the national law of EC member States was formerly available under Article 17, but was deleted in April 2003.  A fourth possibility  is registration by means of an international 
agreement, discussed below. 
7.109  The parties disagree as to whether the second of  these procedures is subject to additional 
conditions found in Article 12(1) of the Regulati on that do not apply to the first procedure.  
Article 12(1) provides as follows: 
                                                     
 
132 Australia's rebuttal submission, para. 72. 
133 This was the approach of the Appellate Body in India – Patents (US) , paras. 65-68.  
134 Parties' respective responses to Panel question No. 1. 
135 The terms "designation of origin" and "geographical indication" are defined in Article 2(2) of the 
Regulation and they and the abbreviations "PDO" and "PGI" are found in Article 4 of the Regulation 
(Exhibits COMP-1b and EC-1).  Detailed rules of application of the Regulation are found in Commission 
Regulation (EEC) No. 2037/93 (Exhibit COMP-2).  
136 This is apparent from Article 5(4) of the Regula tion which provides that "[t]he application shall be 
sent to the Member State in which the geographical area is located", and was confirmed by the European 
Communities in its response to Panel question No. 2.  The European Communities also noted that Articles 12a and 12b refer to certain provisions in Articles 5 to 7 as well. 
137 This is apparent from Article 12a(1) of the Regulation which provides that "if a group of a natural or 
legal person ... in a third country wishes to have a name registered under this Regulation it shall send a registration application to the authorities in the country  in which the geographical area is located", and was 
confirmed by the European Communities in its response to Panel question No. 2.  WT/DS290/R 
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 "1. Without prejudice to international ag reements, this Regulation may apply to 
an agricultural product or foodstuff from a third country provided that: 
- the third country is able to give gua rantees identical or equivalent to those 
referred to in Article 4, 
- the third country concerned has inspection arrangements and a right to 
objection equivalent to those laid down in this Regulation, 
- the third country concerned is prepared  to provide protection equivalent to 
that available in the Community to corresponding agricultural products or foodstuffs coming from the Community."   
7.110  Article 12 has been part of the Regulation sin ce its adoption in 1992, although it was amended 
in April 2003 by the insertion of the requirement of a right of objection equivalent to those laid down 
in the Regulation, when Article 12(3) and Articl es 12a through 12d, including the second procedure 
described above, were inserted.  It is not in disp ute that many WTO Members, including Australia, do 
not satisfy the conditions set out in Article 12(1). 
7.111  The factual issue for the Panel to decide is whether the conditions set out in Article 12(1) 
apply to the availability of protection for GIs locate d in WTO Members.  In other words, the factual 
issue is whether the registration procedure in Articles 12a and 12b is available for GIs located in 
WTO Members that do not satisfy the conditions in Article 12(1).   
7.112  Australia presents two types of evidence.  Th e first is the text of the Regulation and the 
second consists of the European Communities' own statements concerning the Regulation prior to, 
and during, this Panel proceeding.   
7.113  The Panel begins its analysis by reviewing the measure on its face.
138  The procedure in 
Articles 12a and 12b of the Regulati on begins with the filing of an application under paragraph 1 of 
Article 12a and continues with its initial examina tion under paragraph 2.  The text of paragraph 1 
begins "[i]n the case provided for in  Article 12(3)", which immediatel y limits the availability of the 
procedure according to the terms of Article 12(3).  Th e text of paragraph 2 of Article 12a begins "[i]f 
the third country referred to in paragraph 1 deems ..." which confirms that this aspect of the procedure 
is limited in the same way as paragraph 1.  Paragr aph 1 of Article 12b sets out the next step in the 
same procedure and refers to the registration request  sent by "the third country", which is the third 
country described in Article 12b(2). 
7.114  Article 12(3) of the Regulation provides as follows: 
"3. The Commission shall examine, at the request of the country concerned, and 
in accordance with the procedure laid dow n in Article 15 whether a third country 
satisfies the equivalence conditions and offers guarantees within the meaning of 
paragraph 1 as a result of its national legislation.  Where the Commission decision is in the affirmative, the procedure set out in Article 12a shall apply." 
7.115  The case provided for in this paragraph is clear:  it refers to a third country which satisfies the 
conditions in Article 12(1).  The initial clause of Article 12a, as confirmed by the chain of cross-
references in Articles 12a(2) and 12b(1), therefore limits the procedure in Articles 12a and 12b to 
such third countries.  No other provision in Ar ticle 12a or 12b indicates that that procedure is 
                                                     
 
138 This was the Appellate Body's approach to an "as such" claim in its report on US – Corrosion-
Resistant Steel Sunset Review , at para. 168. WT/DS290/R 
Page 42  
 
 available for the registration of GIs located in a th ird country which does not satisfy the conditions in 
Article 12(1), even if it is a WTO Member.  This is  consistent with Article 12b(2), which provides for 
objections in the same procedure, and expressly distinguishes between a "Member State of the 
European Union or a WTO member" and "a third country meeting the equivalence conditions of 
Article 12(3)".  The implication is that a WTO Member is not necessarily a third country meeting 
those conditions.
139   
7.116  The only other provision in the Regulation whic h could indicate the possibility of registration 
of GIs located in a third country which does not satisfy the conditions in Article 12(1) is the 
introductory phrase of Article 12(1) itself, which prefaces the conditions with the clause "[w]ithout prejudice to international agreements".  The Eur opean Communities concedes that the application of 
the conditions in Article 12(1) of the Regulation would prejudice its obligations under Article III:4 of 
GATT 1994 and submits to the Panel that, as a conse quence, it would not apply those conditions to 
GIs located in WTO Members.  Nevertheless, it does not follow that the procedure in Articles 12a and 
12b is available for the registration of GIs located in WTO Members.  That procedure is limited to 
third countries which satisfy the conditions in Artic le 12(1) and there is no other procedure in the 
Regulation available for WTO Members that do not satisfy those conditions.  There is the possibility 
of protection pursuant to an international agreemen t, but no existing international agreement either 
incorporates the procedure under Articles 12a and 12b of the Regulation or contains an application and registration procedure for GIs located in all WTO Members.  In particular, neither GATT 1994 
nor the TRIPS Agreement contains any such procedure. 
7.117  Other provisions in the Regulation may also shed  light on this issue.  Article 12d(1), which 
provides a right of objection to registration of GI s located in the European  Communities, distinguishes 
twice between persons from "a WTO Member co untry or a third country recognized under the 
procedure provided for in Article 12(3)".
140  This expressly grants a right of objection to persons from 
WTO Members and is a further indication that wh ere the Regulation refers to "a third country 
recognized under the procedure provided for in Article 12(3)" it does not include a WTO Member 
unless it has been recognized under that procedure.   
7.118  Four other provisions also refer to "a third country recognized under the procedure provided 
for in Article 12(3)" (or analogous terms) without  referring to a WTO Member:  Article 5(5) on 
registration of GIs that straddle the external border of the European Communities, Article 6(6) on homonymous GIs, Article 10(3) on inspection stru ctures and Article 13(5) on the coexistence of 
registered and unregistered GIs.  The European Comm unities' view of Article 10(3) is that it includes 
WTO Members
141, and there seems to be no reason why the other three provisions should exclude 
WTO Members.  These provisions seem to confirm that WTO Members are included in the term "third countries" and therefore require recognition under the procedure provided for in Article 12(3). 
7.119  The preamble of the Regulation, which has cont ained the conditions in Article 12(1) more or 
less in their current form since the original version was adopted in 1992, sets out its justification.  The 
19
th recital reads as follows: 
                                                      
139 The second sentence of Article 12 (3) provides that the procedure in Article 12a shall apply to third 
countries which the Commission decides satisfy the conditi ons in Article 12(1).  This sentence alone does not 
exclude the possibility that the procedure might apply to other third countries which do not satisfy those 
conditions, but there is no other provision in the Regulation to that effect.  
140 This is considered in detail in para. 7.382 below. 
141 European Communities' responses to Panel question Nos. 126(a) and (b).  WT/DS290/R 
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 "Whereas provision should be made for trad e with third countries offering equivalent 
guarantees for the issue and inspection of ge ographical indications or designations of 
origin granted on their territory;"142 
7.120  The phrase "equivalent guarantees for the issue and inspection" of GIs is a clear reference to 
the conditions in Article 12(1).  There is no recita l referring to the possibility of GIs located in any 
other third countries which do not satisfy these conditions.   
7.121  The preamble to the April 2003 amending Regula tion, which modified Article 12 and inserted 
a detailed procedure for applications and objections from third countries in Articles 12a through 12d, 
sets out the justification for the amendments as follows:   
"(8) The Agreement on Trade-Related Aspects of Intellectual Property Rights 
(TRIPS Agreement 1994, contained in Annex 1C to the Agreement 
establishing the World Trade Organisati on contains detailed provisions on the 
existence, acquisition, scope, maintena nce and enforcement of intellectual 
property rights. 
(9) The protection provided by regist ration under Regulation (EEC) No 2081/92 
is open to third countries' names by reciprocity and under equivalence 
conditions as provided for in Article  12 of that Regulation.  That 
Article should be supplemented so as to guarantee that the Community registration procedure is available to  the countries meeting those conditions. 
(10) Article 7 of Regulation (EEC) No 2081/92 specifies how objections are to be 
made and dealt with.  To satisfy the obligation resulting from Article 22 of 
the TRIPS Agreement it should be made cl ear that in this matter nationals of 
WTO member countries are covered by these arrangements and that the provisions in question apply without prej udice to international agreements, as 
provided for in Article 12 of the said Regulation.  (...)"
143 
7.122  Paragraph 8 recalls the subject-matter of th e TRIPS Agreement without elaborating on its 
relevance to the Regulation.  This clarifies the reference to Article 22 of the TRIPS Agreement in 
paragraph 10 but it is not clear whether it also relate s to paragraph 9.  In any event, on the European 
Communities' later interpretation, the TRIPS Agreem ent is not relevant to the WTO-consistency of 
the conditions provided for in Article 12, as referre d to in paragraph 9.  Rather, the European 
Communities submits that GATT 1994 ensures their WT O-consistency.  GATT 1994 is not recited in 
the preamble. 
7.123  Paragraph 9 contains no qualifie r referring to WTO Members, which appears to confirm the 
position that the conditions in Article 12(1) apply to  the availability of protection of GIs located in 
third countries and that the registration procedur e in Articles 12a and 12b is not available for GIs 
located in WTO Members that do not satisfy those conditions.   
7.124  Paragraph 10 includes the phrase "without prejudi ce to international agreements, as provided 
for in Article 12", but it only relates to the right  of objection granted to WTO Members' nationals.  
This is a clear reference to Articles 12b(2) and 12d(1), which were inserted by the amending 
Regulation.  It can be noted that they are the only two provisions in the current version of the 
Regulation that expressly refer to a "WTO Member ", where they also distinguish a WTO Member 
from a third country recognized under Article 12(3). 
                                                      
142 Exhibits COMP-1b and EC-1. 
143 Exhibit COMP-1h. WT/DS290/R 
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 7.125  In the Panel's view, the meaning and content of  these aspects of the Regulation, together with 
the amending Regulation, are sufficiently clear on their face for Australia to have discharged its 
burden of proof of establishing that, under the Regula tion "as such", the availability of protection for 
GIs located in WTO Members is contingent upon satis faction of the conditions set out in Article 12(1) 
and recognition by the Commission under Article 12(3).
144   
7.126  There is no supporting evidence of the meaning of  these aspects of the Regulation in the form 
of an interpretation of the relevant provisions by the European Court of Justice or any other domestic 
court.145  This is partly explained by the facts that no requests for registration of foreign GIs have been 
made under the Regulation and that Articles 12a th rough 12d were inserted only recently, in April 
2003.   
7.127  Australia also presents evidence consisting of various statements by executive authorities of 
the European Communities which contain interpretations  of the Regulation.  The Panel considers that 
such statements can be useful as, objectively, a WTO Member is normally well placed to explain the meaning of its own domestic law.
146  However, the usefulness of any particular statement will depend 
on its contents and the circumstances in which it was made.  The Panel has weighed the evidence and 
considers that one statement in particular, in light of the clarity of its contents and the official capacity 
in which it was delivered, is highly relevant to the issue at hand. 
7.128  In a lengthy statement to the Council for TRI PS in September 2002 (prior to the insertion of 
Articles 12a through 12d), the European Communities specifically responded to the following view 
expressed by a group of Members, including Australia: 
"[U]nder the current EC regulations, the EC does not appear to provide protection for 
non-EC geographical indications (i.e., place names of other WTO Members), except 
on the basis of bilateral agreements, or if the EC has determined that a country has a 
system for geographical indications that is equivalent to the detailed system of the EC."
147   
7.129  The European Communities introduced the re levant part of its response as follows: 
"(...) I would like to address one issue that is  raised regarding the fact that the EU 
register for GIs on foodstuffs does not allow the registration of foreign GI unless it is determined that a third country has an e quivalent or reciprocal system of GI 
protection."
148 
7.130  The Panel notes that the Eur opean Communities was emphatic at that time that registration 
systems should primarily be aimed at domestic GIs and it quoted the legislation of several other WTO 
Members which allegedly do not register fore ign GIs without an international agreement.149  This 
statement by the European Communities in Sept ember 2002 to the Council for TRIPS therefore 
appears to support Australia's interpretation of the Regulation on its face.   
                                                      
144 The European Commission has not recognized any other country under this procedure:  see 
European Communities' response to Panel question No. 10.  It is not contested that the Commission cannot 
recognize a third country under Article 12(3) that does not satisfy the equivalence and reciprocity conditions. 
145 European Communities' response to Panel question No. 19. 
146 See para. 7.106 above. 
147 Communication from Australia, Canada, Guatemala,  New Zealand, Paraguay, the Philippines and 
the United States (IP/C/W/360) para. 4. 
148 See the statement in the Annex to the minutes of that meeting in document IP/C/M/37/Add.1. 
149 Ibid.  WT/DS290/R 
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 7.131  The European Communities argues that the interpretation set forth in its September 2002 
statement to the Council for TRIPS "is not incompa tible with the text of Regulation 2081/92 as in 
force at the time it was made or with the statements  of the EC in the present case".  In its view, its 
intention at that time was not primarily to explain the EC system for the protection of geographical indications and its statement did not take acc ount of amendments made in April 2003.   
7.132  In the Panel's view, the European Communities'  September 2002 statement was very clear in 
its interpretation of the relevant point of the Regul ation.  Further, nothing in the April 2003 amending 
Regulation appears to render that statement incompatib le with the current version of the Regulation.  
In fact, the Panel's examination of the inserti on of Article 12(3) and Articles 12a through 12d 
confirms that the conditions in Article 12(1)  remain applicable on the same terms.   
7.133  Australia also refers to the explanation of the amendments given by the European 
Commission at the time it proposed them, in March 2002.  The Panel considers that this evidence 
corroborates the previous statement b ecause of the clarity of its conten ts and the capacity in which it 
was made. In a press release, the Commission explained that, in order to comply with the TRIPS Agreement, it proposed to extend the right of objection to certain other WTO Member country 
nationals and further stated: 
"Beyond mere TRIPS consistency, the Commission proposes important amendments 
designed to promote the EU system of denominations of origin as a model to the rest of the world.  The driving idea behind is the wish to improve protection of European quality products also outside the EU.  As  the EU cannot force non-EU countries to do 
so, they would be invited to do so on a 'reciprocal basis'.  If a non-EU country 
introduced an 'equivalent system' including the right of objection for the EU and the 
commitment to protect EU names on their territory, the EU would offer a specific protection to register their products for the EU market."
150 
The references to a reciprocal basis and an equivalent  system are clear references to the conditions in 
Article 12(1) of the Regulation.   
7.134  In its submissions to the Panel, the Europ ean Communities rejects that interpretation and 
submits that, due to the introductory phrase of Article 12(1) of the Regulation, "[w]ithout prejudice to international agreements", the cond itions in Article 12(1) do not apply to the availability of protection 
for GIs located in WTO Members.  It refers to a statement it made to the Council for TRIPS in June 
2004 in the days before the first s ubstantive meeting of this Panel
151 and a second edition of the 
Commission's Guide to the Regulation published in  August 2004 in the days prior to the second 
substantive meeting of this Panel.152  It advises that "[t]he guide w as not prepared in connection with 
the Panel proceedings".153 
7.135  The Panel recalls its reasoning in  paragraph 7.116 above , and reiterates its view that, even if 
the phrase "[w]ithout prejudice to international agreem ents" had the effect of subjecting the conditions 
                                                      
150 European Commission:  "Food quality:  Commission proposes better protection for geographical 
names" (Press Release Reference: IP/02/422), Brussels, 15 March 2002 set out in Exhibit AUS-4. 
151 See the minutes of that meeting in IP/C/M/44, paras. 62-63, quoted in the European Communities' 
response to Panel question No. 16 prior to circulation and also set out in Exhibit EC-83.  Responses given by the 
European Communities to questions posed by two othe r WTO Members in the TRIPS Council review of its 
legislation in 1996-1997, before the in sertion of Articles 12a through 12d, are inconclusive on this issue as they 
contain no clear statement that equiva lence and reciprocity conditions do not apply to the registration of GIs 
located outside the European Communities in countries without a bilateral agreement:  see European 
Communities' response to Panel question No. 97.  
152 Exhibit EC-64. 
153 European Communities' response to Panel question No. 96. WT/DS290/R 
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 in Article 12(1) to the terms of GATT 1994 or the TRIPS Agreement, those agreements do not 
contain a procedure for applications and registra tion for GIs located in all WTO Members.  WTO 
Members would still have to satisfy the conditions in  Article 12(1) in order for their GIs to gain 
access to the procedure in Articles 12a and 12b.   
7.136  The European Communities admits that this would be a "nonsensical result".
154  However, it 
is unable to provide a satisfactory explanation as to how this result could be avoided in light of the 
wording of Article 12a, which begi ns "[i]n the case provided for in Article 12(3)".  The European 
Communities points out that Article 12(3) refers to the conditions in Article 12(1) and since, in its 
view, those conditions do not apply to WTO Memb ers, the procedure in Article 12(3) and the 
reference in Article 12a do not apply to them either.155   
7.137  The Panel agrees that Article 12(3) provid es for a Commission decision on whether a third 
country satisfies the conditions in Article 12(1) and accepts that, if those conditions do not apply to a 
third country, there would be no relevant decision un der Article 12(3).  Yet this does not alter the text 
of Article 12a which applies "[i]n the case provided for in Article 12(3)".  Article 12a does not appear, 
on its face, to apply to the registration of a GI lo cated in a third country, including a WTO Member,  
which is not recognized under Article 12(3).  For th ese reasons, the Panel is not persuaded that the 
European Communities' interpretation is correct. 
7.138  It is not necessary for the purposes of this dispute to determine which are the precise 
international agreements covered by the phrase "[w]it hout prejudice to international agreements".  It 
suffices to note that there is a plausi ble alternative interpretation that it refers to bilateral agreements 
under which the European Commun ities would protect specific GIs.156  The European Communities 
does not exclude this, but argues that there is no reason why only such specific agreements should be 
covered.157 There are currently no such bilateral agreemen ts for agricultural products and foodstuffs, 
although one has been foreshadowed in a joint declaration with Switzerland.158   
7.139  In any event, the Panel is not persuaded by the European Communities' explanations during 
this Panel proceeding of the phrase "[w]ithout prej udice to international agreements" as used in 
Article 12(1) of the Regulation.  At the first substa ntive meeting, in support of its first defence, it 
provided the following explanation of that phrase: 
"(...) Such international agreements include  the WTO Agreements. This is made clear 
by the 8th recital of Regulation 692/2003, wh ich amended the procedures for the 
registration of non-EC geographical indicati ons, and in this context took specific 
account of the provisions of the TRIPS. 
"WTO Members are obliged to provide protection to geographical indications in 
accordance with Section 3 of Part II and the general provisions and basic principles of the TRIPS Agreement. For this reason, Ar ticle 12 (1) and (3) of Regulation 2081/92 
do not apply to WTO Members. (...)"
159 
                                                      
154 European Communities' second oral statement, para. 48. 
155 European Communities' response to Panel question No. 7. 
156 Australia's response to Panel question No. 6. 
157 European Communities' rebuttal submission, para. 69. 
158 European Communities' response to Panel question No. 21.   
159 European Communities' first written submission, paras.  65-66.  It reiterated this in its first oral 
statement, at para. 43, and confirmed it in its response to Panel question No. 3 adding as follows:  
"At the time that Regulation 2081/92 was adopte d, the GATT was one of the agreements to 
which the 'without prejudice' clause applied. Moreover, at the time that Regulation 2081/92 
was adopted, the TRIPS Agreement was in the final phases of its negotiation. It was therefore  WT/DS290/R 
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 7.140  This explanation was also reflected in a June  2004 statement that the European Communities 
made to the Council for TRIPS160 and the August 2004 edition of the Commission's Guide to the 
Regulation161.   
7.141  At the same time, the European Communities'  second defence was that the conditions in 
Article 12(1) of the Regulation were  not inconsistent with the nati onal treatment obligations in the 
TRIPS Agreement, essentially because they discrimin ate according to the location of GIs and not 
according to the nationality of persons  with rights in relation to GIs.162   
7.142  It was not clear how these two de fences could be reconciled.  If the first defence implied that 
the conditions did not apply because they woul d prejudice the European Communities' national 
treatment obligations under the TRIPS Agreement, it would have contradicted the second defence that 
these conditions were not inconsistent with th e national treatment obligations in the TRIPS 
Agreement.  The Panel sought clarification from the European Communities by posing the question 
"does the EC contest that equivalence and reciprocity  conditions such as those under Article 12(1) and 
(3) of Regulation (EC) No. 2081/92, if applied to other WTO Members, would be inconsistent with 
the national treatment obligations in the TRIPS Ag reement and/or Article III:4 of the GATT 1994?".  
The European Communities declined to give a specif ic answer to the Panel's question and concluded 
as follows: 
"As regards the specific conditions containe d in Article 12 (1) of Regulation 2081/92, 
the EC has already confirmed that it does not  apply these to WTO Members.  For this 
reason, the EC considers that the questi on whether these conditions are inconsistent 
with the national treatment obligations of the TRIPS Agreement and the GATT does 
not arise."163 
7.143  Australia then submitted that the European Communities had impliedly admitted that the 
conditions in Article 12(1) of the Regula tion were contrary to WTO obligations.164 
7.144  The Panel again sought clarification at the second substantive meeting, by asking which 
precise obligations under an intern ational agreement would be prejudiced by the application of the 
specific conditions in Article 12(1) of the Regula tion to WTO Members.  The European Communities 
responded that it was its obligations under Article  III:4 of GATT 1994, but not Article 3.1 of the 
TRIPS Agreement, because the Regulation did not i nvolve any discrimination between nationals.  It 
later confirmed this in writing.165  Therefore, to the extent that the European Communities' 
explanation of the phrase "[w]ithout prejudice to inte rnational agreements" as used in Article 12(1) of 
the Regulation relies on the TRIPS Agreement, the European Communities has expressly denied that 
the phrase refers to its own obligations and the Pa nel does not consider that possible explanation 
further.166 
                                                                                                                                                                     
the objective that the 'without prejudice' clause should also apply to the TRIPS and other 
WTO agreements resulting from the Uruguay Round." 
160 See the minutes of that meeting in document IP/C/M/44, paras. 62-63, cited in response to Panel 
questions Nos. 16 and 95 and set out in Exhibit EC-83. 
161 Set out in Exhibit EC-64. 
162 European Communities' first written submission, paras.  123-126;  first oral statement, paras. 46-47; 
rebuttal submission, para. 43. 
163 European Communities' response to Panel question No. 20. 
164 Australia's first oral statement, para. 23;  rebuttal submission, para. 177;  second oral statement, 
para. 61. 
165 European Communities' response to Panel question No. 94. 
166 In the same question, the Panel also sought clar ification of the relevance of the reference to the 
TRIPS Agreement in the European Communities' first wr itten submission, quoted at paragraph 7.139 above.  WT/DS290/R 
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 7.145  At this time, the European Communities' explanation of the phrase "[w]ithout prejudice to 
international agreements" as used in Article 12(1) of the Regulation relies on GATT 1994.  In light of 
the European Communities' analysis that this phr ase ensures that "should a conflict between the two 
acts or provisions occur, then the act or provision to which the 'without prejudice' reference is made prevails"
167, it is clear that this explanation depends on the view that the equivalence and reciprocity 
conditions are inconsistent with  the European Communities' obligations under Article III:4 of GATT 
1994.  However, this is difficult to reconcile with  the European Communities' earlier view that the 
question whether these conditions are inconsistent with the national treatment obligations of GATT 
does not arise, quoted at paragraph 7.142 above.  It  was also omitted from the earlier explanation that 
the conditions did not apply because of obligations  under the TRIPS Agreement, quoted at paragraph 
7.139 above.  Further, the evidence submitted by  the European Communities provides no additional 
support for this explanation, as the amending Regul ation recites the TRIPS Agreement but not GATT 
1994, and the evidence identified at paragraph 7.140 above also reflects the explanation quoted at 
paragraph 7.139 above. 
7.146  For all these reasons, the Panel is not persuade d by the European Communities' explanations 
of the phrase "[w]ithout prejudice to international agreements" as used in Article 12(1) of the 
Regulation.   
7.147  The Panel takes note that there are vari ous executive authorities involved in the 
implementation of the Regulation, including represent atives of EC member States.  Article 15 of the 
Regulation provides for a regulatory procedure under  which the Commission shall be assisted by a 
regulatory committee composed of the representatives of the EC member States and chaired by the 
representative of the Commission, who does not vote.168   
7.148  The European Communities' delegation to this panel proceeding confirms that the 
submissions made by agents of the European Commission before the Panel commit and engage the 
European Communities.169  It also indicates that Community laws are generally not executed through 
authorities at Community level but rather through r ecourse to the authorities of its member States 
which, in such a situation, "act de facto  as organs of the Community, for which the Community would 
be responsible under WTO law and international law in general".170  The Panel accepts this 
explanation of what amounts to the European Co mmunities' domestic constitutional arrangements and 
accepts that the submissions of the European Comm unities' delegation to this panel proceeding are 
made on behalf of all the executive au thorities of the European Communities.171  
7.149  The parties have presented evidence with respect to the approach that would be taken by the 
European Court of Justice if the executive authoriti es registered a GI that was not the subject of an 
international agreement and that was located in a th ird country that did not satisfy the conditions in 
Article 12(1) of the Regulation.  The European Communities submits that, according to the settled 
case law of the European Court of Justice: 
                                                                                                                                                                     
The European Communities' response does not provide a clear explanation of the relationship between the 
obligations of WTO Members under the TRIPS Agreement and the applicability of the equivalence and reciprocity conditions under the EC's GI Regulation:  see its response to question No. 94(b), second paragraph. 
167 European Communities' rebuttal submission, para. 55. 
168 This procedure is described in detail in paras. 7.388 to 7.389 below. 
169 European Communities' responses to Panel questions Nos. 15 and 18. 
170 European Communities' second oral statement, para. 148. 
171 The delegation of the European Communities to the meetings with the Panel was composed of 
officials of the European Commission and delegates of certain EC member States.  The European Communities 
indicated that its statements to the Panel "commit and engage the European Communities": see response to 
Panel question No. 15.  The Panel accepts that explanation,  for the same reasons as those explained by the Panel 
in US – Section 301 Trade Act , at para. 7.123.  See also, in this regard, paras. 7.304, 7.372 and 7.399 of the 
present report.  WT/DS290/R 
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 "Community legislation must, so far as possi ble, be interpreted in a manner that is 
consistent with international law, in pa rticular where its provisions are intended 
specifically to give effect to an in ternational agreement concluded by the 
Community."172 
7.150  The Panel is not persuaded that it is possible to  interpret the relevant aspects of the Regulation 
in the manner advanced by the European Commun ities in these proceedings, for the reasons already 
given.  The Panel also notes that the basic Regula tion does not indicate that its provisions are intended 
specifically to give effect to any international agreement concluded by the Community.  Whilst the 
April 2003 amending Regulation recites the TRIPS Agre ement, it would only seem to do so to justify 
extending the right of objection to nationals of WTO Members.  In any case, the European 
Communities' later explanation is that the interp retation must take account of GATT 1994, which is 
not mentioned at all, rather than the TRIPS Agreement.   
7.151  Article 11 of the DSU requires that "a pane l should make an objective assessment of the 
matter before it, including an objective assessment of  the facts of the case ...".  In our view, our duty 
to make an objective assessment prohibits us from accepting the interpretation of th e applicability of 
the conditions in Article 12(1) of the Regulati on presented by the European Communities in this 
proceeding, for the reasons set out above.   
7.152  Therefore, the Panel concludes that Australia h as made a prima facie case that the equivalence 
and reciprocity conditions in Article 12(1) of the Re gulation apply to the availability of protection for 
GIs located in third countries, including WTO Members.   In other words, the registration procedure in 
Articles 12a and 12b is not available for GIs located in third countries, including WTO Members, that 
do not satisfy the conditions in Article 12(1).  The European Communities has not succeeded in 
rebutting that case.   
7.153  The Panel wishes to note that it has evaluated the European Communities' interpretation of 
the applicability of the equivalence and reciprocity conditions and not found it reflected in the text of 
the Regulation.  Had this interpretation been reflect ed in the text of the Regulation, the Panel could 
have reached a different conclusion which would have rendered it unnecessary to continue with an 
examination of the consistency of  those conditions with the provis ions of the covered agreements. 
(b) National treatment under the TRIPS Agreement 
(i) Main arguments of the parties 
7.154  Australia  claims that the Regulation is inconsistent  with Article 3.1 of the TRIPS Agreement 
and Article 2(1) of the Paris Convention (1967) , as incorporated by Article 2.1 of the TRIPS 
Agreement, because it imposes conditions of reciprocity and equivalence on the availability of 
protection.  Unless the WTO Member government in  whose territory the geographical location at 
issue is situated is able and willing to meet the equivalence and reci procity conditions, non-EC 
nationals are not able to access the rights availa ble to EC nationals, including the advantages of 
registration.173  Australia, at the first substantive mee ting, expressly endorsed the comments made by 
the United States concerning the EC's national tr eatment obligations under the TRIPS Agreement.174   
                                                      
172 European Communities' response to Panel question No. 15 quoting Case C-341/95, Bettati , [1998] 
ECR I-4355, para. 20;  which cited Case C-61/94, Commission/Germany [1996] ECR I-4006, para. 52, set out in 
Exhibits EC-13 and EC-14.   
173 Australia's first written submission, para. 199. 
174 Australia's first oral statemen t, para. 33.  The United States' first oral statement included inter alia  
comments that the distinction between the location of a geographical area and the nationality of the right holder 
is not meaningful as right holders are overwhelmingl y nationals of the place wher e their respective GIs are WT/DS290/R 
Page 50  
 
 7.155  Australia argues that at least one right at issue in this dispute is the right to obtain registration.  
Under the Regulation, a non-EC national seeking to register a GI for an area located outside the EU is 
treated less favourably than an EC national seeking to register a GI for an area located within the EU.  
It is not necessary to make assumptions about the population of other categor ies of nationals and the 
location of their rights.
175  In its view, a national for the purposes of the TRIPS Agreement, in the case 
of a natural person, is a person who possesses the nati onality of a state in accordance with that state's 
laws or a person who is domiciled or who has a real and effective industrial or commercial 
establishment in a separate customs te rritory, as a proxy for the ordinary notion of nationality.  In the 
case of a legal person, it is a person who is dom iciled or who is established in the Member in 
accordance with whose laws nationality is claimed.176 
7.156  Australia considers that less favourable treatment under Article 3.1 of the TRIPS Agreement 
does not preclude formally different treatment, a nd could include disadvantages or costs, whereas 
Article 2(1) of the Paris Convention (1967) requires the granting of the same advantages .177  It argues 
that the perceived advantages of registration under the Regulation include protection against a 
registered name becoming generic, broad-ranging pr otection, including even against evocation of a 
registered GI, as well as ex officio Community-wide protection.178   
7.157  Australia refers to the jurisprudence on Article III:4 of GATT 1994 and considers that 
"treatment no less favourable" in Article 3.1 of the TRIPS Agreement could be examined in terms of 
whether the effect of a measure is to modify the conditions of competition in the EC market to the 
detriment of nationals of other WTO Members with regard to the protection of intellectual property.179 
The effect of the Regulation at issue in this dis pute is to accord less favourable treatment to non-EC 
nationals because the additional requirements for GIs located outside the EC overwhelmingly apply to 
non-EC nationals, given the reality that persons with an interest in securing the registration of the 
name of a geographical area will almost always  be nationals of the Member in which that 
geographical area is located.180   
7.158  Australia considers that an overarching exceptions provision analogous to Article XX of 
GATT 1994 was unnecessary in the TRIPS Agreemen t and is irrelevant to the assessment of de facto  
discrimination under that agreement because there were pre-existing multilate ral intellectual property 
conventions already in place;  Members may take  account of legitimate public policy objectives as 
recognized in Articles 7 and 8 but then must appl y them in accordance with national treatment and 
MFN treatment;  specific exceptions exist in th e TRIPS Agreement for separate categories of 
intellectual property rights.181   
7.159  Australia also claims that the Regulation im poses a requirement of establishment in the EC 
inconsistently with Article 2(2)  of the Paris Convention (1967).182  
                                                                                                                                                                     
located and that there is an obvious link and close relationship between the nationality of the persons who would 
seek GI protection for agricultural products and foodstuf fs and the territory of the Member in which they are 
growing or producing such products, which is supported by data on the applicants for certification marks in the 
United States.  
175 Australia's response to Panel question No. 101. 
176 Australia's response to Panel question No. 23. 
177 Australia's response to Panel question No. 31. 
178 Australia's first written submission, para. 197. 
179 Australia's second oral statement, para . 74;  response to Panel question No. 103. 
180 Australia's responses to Panel questions Nos. 22, 27 and 102;  rebuttal submission, para. 184. 
181 Australia's response to Panel question No. 103. 
182 Australia's first written submission, paras. 199 and  206.   WT/DS290/R 
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 7.160  The European Communities responds that this claim must fail .  Its first defence is that it 
does not, in fact, apply the conditions in Article 12( 1) of the Regulation to geographical areas located 
in WTO Members.  That defence has been c onsidered in the previous sub-section.   
7.161  The European Communities does not contest that national treatment under the TRIPS 
Agreement applies to more extensive protection gr anted in respect of intellectual property rights 
addressed in the TRIPS Agreement.183   
7.162  The European Communities argues that the conditio ns in Article 12(1) of the Regulation do 
not depend on nationality .  The Regulation sets out two procedures for registration:  one for 
geographical areas located within the European Co mmunities and one for those located outside the  
European Communities.  Whether the geographical ar ea is located within or outside the European 
Communities is in no way linked to the question of the nationality of the producers concerned.184  
This may concern the origin of the product but has nothing to do with the nationality of the producer, 
which is simply of no relevance for the registration of the GI.185  There are no legal requirements 
which ensure that applicants for GIs for geogra phical areas located in the European Communities are 
always, or usually, EC nationals.186  There is no reason why a foreign national cannot produce 
products in accordance with a product specification in  a GI registration located in the European 
Communities, and there are examples of foreign co mpanies which have invested in the European 
Communities in this way.187  If an applicant or user sets up a lega l entity in the geographical area, that 
is simply a practical consequence of the fact that products must be produced in accordance with 
product specifications.188  Nationality is determined by the laws  of each State and is not simply a 
matter of domicile or establishment, which is highlighted by the specific rules in Article 3 of the Paris 
Convention (1967) and footnote 1 to the TRIPS Agreement which would otherwise be unnecessary.189  
The European Communities is not a "separate custom s territory" within the meaning of footnote 1 to 
the TRIPS Agreement.190  The meaning of "interested parties" in Article 10(2) of the Paris Convention 
(1967) is inapplicable in Article 22 of the TRIPS Agreement.191  Nationality is not linked to the points 
of attachment but must be given a uniform meaning for all intellectual property rights.192  T h e  
Regulation does not require any comparison of  nationals because it does not contain any 
discrimination on the basis of nationality.193 
7.163  The European Communities argues that the exis tence of different procedures which apply 
according to location of geographical areas is not sufficient to show less favourable treatment but 
rather there must be a substantive difference be tween those provisions which entails less favourable 
treatment.  A measure would have to modify the conditions regarding the pr otection of intellectual 
property rights within the meaning of the TRIPS Agreement to the detrimen t of foreign nationals.194 
7.164  The European Communities argues that the ju risprudence on Article III:2 of GATT 1994 is 
not relevant to the present dispute because of diffe rences between paragraphs 2 and 4 of Article III 
and between Article III and Article 3.1 of the TRI PS Agreement.  There is no general concept of 
                                                      
183 European Communities' response to Panel question No. 111. 
184 European Communities' first written submission, paras. 123-126. 
185 European Communities' first oral statement, para s. 46-47;  response to Panel question No. 106. 
186 European Communities' response to Panel question No. 22. 
187 European Communities' rebuttal submission, paras. 45-48; second oral statement, paras. 28-30; 
response to Panel question No. 106. 
188 European Communities' response to Panel question No. 107;  second oral statement, paras. 29-30.   
189 European Communities' response to Panel question No. 23;  rebuttal submission, paras. 37-40. 
190 European Communities' rebuttal submission, para. 35. 
191 European Communities' response to Panel question No. 24. 
192 European Communities' response to Panel question No. 26. 
193 European Communities' response to Panel question No. 101 and comments on that response.   
194 European Communities' second oral statement, pa ras. 39-41;  response to Panel question No. 113. WT/DS290/R 
Page 52  
 
 discrimination common to all WTO agreements.  There has never been a de facto  application of 
Article 3.1 and the  concept of conditions of co mpetition is not easily transposable to the TRIPS 
Agreement. Whilst it may be possible under certain circumstances that measures which are neutral on 
their face accord less favourable treatment to nationals, the Panel shoul d take account of the 
following:  (1)  the present case relates primarily to the origin of goods which is already dealt with 
more appropriately in the context of Article  III:4 of GATT 1994, not the TRIPS Agreement; (2) 
de facto  discrimination is a notion closely related to preventing circumvention of national treatment 
obligations, which does not exist wh en the specific issue is dealt with in other national treatment 
provisions, such as those of GATT; and (3) the na tional treatment provisions of GATT and the TRIPS 
Agreement should not systematically overlap.  In  addition, the TRIPS Agreement does not contain 
any provision corresponding to Article XX of GA TT 1994 and it would not seem appropriate for a 
measure justified on the basis of Article XX to be found incompatible with the covered agreements on 
the basis of a de facto  application of TRIPS national treatment.
195 
(ii) Main arguments of third parties 
7.165  Brazil submits that the equivalence and recipr ocity conditions in the Regulation are 
inconsistent with national treatme nt under Article 3.1 of the TRIPS Agreement.  In most cases under 
the Regulation, discrimination according to geograp hical areas is discrimination between nationals.196  
7.166  Canada submits that the equivalence and recipr ocity conditions in the Regulation are 
inconsistent with national treatment under Artic les 2.1 and 3.1 of the TRIPS Agreement.  
Discrimination on the basis of geographical area di scriminates on the basis of nationality because of 
the "simple and incontestable" reality that EC nati onals are likely to register for protection of GIs 
located in the European Communities and non-EC nationals are likely to register for protection of GIs 
located outside the European Communities.  The exp licit requirement that the physical production of a 
good that qualifies for a GI take place in the area i ndicated by the GI, means that an applicant for a GI 
located in the European Communities will, in all pr obability be a national of an EC member State.  
The treatment of "nationals" unde r the TRIPS Agreement extends de jure  to geographical area.197 
7.167  China considers that "nationals" within the meaning of the TRIPS Agreement includes 
natural persons who are domiciled, or legal persons who have a r eal and effective industrial and 
commercial establishment, in that Member.198 
7.168  Colombia considers that any distinction that in an y way identifies the GIs of the European 
Communities clearly entails a violati on of national treatment obligations.199 
7.169  India considers that the only valid interpretation of "treatment with regard to the protection " 
in Article 3.1 of the TRIPS Agreement is that no less favourable treatment to  nationals of other WTO 
Members cannot be provided unless no less favourable tr eatment is also provided to the GIs for which 
they apply, whether located in  the European Communities or in other WTO Members.  The only 
available exceptions are found in Article 3.2.200 
                                                      
195 European Communities' response to Panel question No. 29;  rebuttal submission, para. 49; second 
oral statement, paras. 33-37;  response to Panel question No. 103.   
196 Annex C, paras. 23 and 34. 
197 Annex C, paras. 57-63. 
198 Annex C, para. 93. 
199 Annex C, para. 101. 
200 Annex C, para. 104.  WT/DS290/R 
 Page 53 
 
 
 7.170  Mexico considers that the equivalence and reciproc ity conditions prevent nationals of other 
WTO Members enjoying the protection afforded by th e Regulation, which is contrary to the national 
treatment principle in Article 3.1 of the TRIPS Agreement.201 
7.171  New Zealand submits that the term "nationals" clear ly has a geographical connotation in the 
context of the TRIPS Agreement.  Article 3 of the Paris Convention (1967) sets out a criterion for 
eligibility for protection to which the definition of "nationals" in Article 1. 3 of the TRIPS Agreement 
refers.  Footnote 1 to Article 1.3 of the TRIPS Ag reement provides further support.  The definition of 
an applicant in the Regulation includes persons acco rding to their location.  The most favourable 
treatment accorded to EC nationals should be compared with that received by WTO Member 
nationals.  "Less favourable treatment" requires not only a difference in applicable laws but some 
disadvantage as a result of that difference.  At wo rst, the difference means that the benefits of 
registration are entirely unavailable.  At best, it means that other WTO Member nationals are subject to "extra hurdles" and disadvantaged.  As a result,  they do not have the same opportunities to protect 
their GIs through registration as do EC nationals.  The individual's right to apply for protection is 
conditioned on factors over which the applicant has no control.  The advantages granted by 
registration include those under Article 13 a nd, according to the preamble, higher incomes.
202   
7.172  Chinese Taipei submits that the equivalence and reci procity conditions violate the national 
treatment obligation in Article 3.1 of the TRIPS Ag reement and Article 2(1) of the Paris Convention 
(1967).  It recalls that national treatment under the TRIPS Agreement applies to "nationals" and that 
the European Communities compares EC nationals and non-EC nationals with GIs located in the 
European Communities.  It treats them complete ly independently of EC  nationals and non-EC 
nationals with GIs located outside the European Co mmunities.  This essentially is an argument that 
the European Communities can establis h a separate set of rules for, and discriminate against, non-EC 
GIs as it wishes.  Chinese Taipei submits that the Panel should examine whether any person, whether 
an EC or a non-EC national, with a GI, whether lo cated in the European Co mmunities or outside the  
European Communities, receives treatment less favourab le than that accorded to an EC national with 
a GI located in the European Communities.  Footnote 1 to the TRIPS Agreement applies to the 
European Communities as a separate customs territory.203 
(iii) Consideration by the Panel 
National treatment obligations in the TRIPS Agreement  
7.173  These claims are made under two national treatment  obligations: one found in Article 3 of the 
TRIPS Agreement, which forms part of the text of  that agreement, and the other found elsewhere, in 
Article 2 of the Paris Convention (1967) as incorpor ated by Article 2.1 of the TRIPS Agreement.  The 
Panel will first consider the claim unde r Article 3 of the TRIPS Agreement. 
7.174  Article 3.1 of the TRIPS Agreement provides as follows: 
"1. Each Member shall accord to the nationals of other Members treatment no 
less favourable than that it accords to its ow n nationals with regard to the protection 
of intellectual property, subject to the exceptions already provided in, respectively, 
the Paris Convention (1967), the Berne C onvention (1971), the Rome Convention or 
the Treaty on Intellectual Property in Respect  of Integrated Circuits.  ..." [footnote 3 
omitted] 
                                                      
201 Annex C, para. 110.  
202 Annex C, paras. 130-132. 
203 Annex C, paras. 168-172. WT/DS290/R 
Page 54  
 
 7.175  Two elements must be satisfied to establish an inconsistency with this obligation:  (1) the 
measure at issue must apply with regard to the protection of intellectual property;  and (2) the 
nationals of other Members must be accorded "l ess favourable" treatment than the Member's own 
nationals.  The Panel will address each of these elem ents in turn.  The parties do not agree on the 
meaning of "nationals" for the purposes of this clai m.  The Panel will therefore address that issue in 
the course of its consideration of the second element of this claim.  
Protection of intellectual property
 
7.176  The national treatment obligation in Article 3 of  the TRIPS Agreement applies "with regard to 
the protection of intellectual property".  Footnote 3 provides an inclusive definition of the term "protection" as used in Articles 3 and 4.  It reads as follows: 
"For the purposes of Articles 3 and 4, 'protection' shall include matters affecting the 
availability, acquisition, scope, maintenance and enforcement of intellectual property 
rights as well as those matters affecting the use of intellectual property rights specifically addressed in this Agreement." 
7.177  Article 1.2 explains the term "intellectual property": 
"2. For the purposes of this Ag reement, the term 'intellectual property' refers to 
all categories of intellectual property that ar e the subject of Sections 1 through 7 of 
Part II."   
7.178  Turning to the Regulation, Article 12(1) refers to how the Regulation "may apply", which is a 
reference to the availability of intellectual property rights in relation to "designations of origin" and 
"geographical indications", as defined in the Regula tion.  It is not disputed that "designations of 
origin" and "geographical indications", as defined in the Regulation, fall within the category of 
"geographical indications", the subject of Section 3 of Part II, and therefore part of a category of 
intellectual property within the meaning of  Article 1.2 of the TRIPS Agreement. 
7.179  Therefore, this claim concerns the "protecti on" of intellectual property, as clarified in 
footnote 3 to the TRIPS Agreement, within the scope  of the national treatment obligation in Article 3 
of that Agreement. 
7.180  It is not necessary to show that the Regulation implements the minimum standards in Part II 
of the TRIPS Agreement for the purposes of these claims.  National treatment is required with regard to the protection of intellectual property, even wher e measures provide a higher level of protection.   
Less favourable treatment accorded to the nationals of other Members
 
Less favourable treatment 
7.181  The Panel now examines the second element of th is claim which is whether the nationals of 
other Members are accorded less favourable tr eatment than the Eur opean Communities' own 
nationals.  It is useful to recall that Article 3.1 of the TRIPS Agreement combines elements of national 
treatment both from pre-existing intellect ual property agreements and GATT 1994.204  Like the pre-
existing intellectual property conven tions, Article 3.1 applies to "na tionals", not products.  Like 
                                                      
204 Three of these national treatment obligations ar e incorporated in the TRIPS Agreement itself: 
Article 2 of the Paris Convention (1967), (considered below at paras. 7.250 and following) Article 5 of the Berne Convention (1971) and Article 5 of the IPIC Treaty, which are incorporated by Articles 2.1, 9.1 and 35 of 
the TRIPS Agreement, respectively.  WT/DS290/R 
 Page 55 
 
 
 GATT 1994, Article 3.1 refers to " no less favourable" treatment, not th e advantages or rights that laws 
now grant or may hereafter grant, but it does not refe r to likeness.  This combination of elements is 
reflected in the preamble to the TRIPS Agre ement which explains the purpose of the "basic 
principles" in Articles 3 and 4 (a term highlighted in the title of Part I) as follows: 
"Recognizing , to this end, the need for new rules and disciplines concerning:  
(a) the applicability of the basic principles of GATT 1994 and of relevant 
international intellectual propert y agreements or conventions;" 
7.182  The "no less favourable" treatment standard set out  in the first sentence of Article 3.1 of the 
TRIPS Agreement is subject to certain specific ex ceptions, some of them found in the pre-existing 
intellectual property conventions.  None of the excepti ons in Article 3.1 and 3.2 are relevant to this 
dispute.205  Where these exceptions and limitations do not apply, the language of the basic obligation 
in the first sentence of Article 3 is very broad, referring to treatment that is "no less favourable". 
7.183  We recall that the Panel in US – Section 211 Appropriations Act , in a finding with which the 
Appellate Body agreed206, found that the appropriate standard of  examination under Article 3.1 of the 
TRIPS Agreement is that enunc iated by the GATT Panel in US – Section 337 .  That GATT Panel 
made the following findings on the "no less favour able" treatment standard under Article III:4 of 
GATT 1947: 
"The words 'treatment no less favourable' in paragraph 4 call for effective equality of 
opportunities for imported products in respect of the application of laws, regulations 
and requirements affecting the internal  sale, offering for sale, purchase, 
transportation, distribution or use of products.  This clearly sets a minimum 
permissible standard as a basis."207   
7.184  Therefore, the Panel will examine whether the difference in treatment affects the "effective 
equality of opportunities" between the nationals of other Members and the European Communities' 
own nationals with regard to the "protection" of  intellectual property rights, to the detriment of 
nationals of other Members.   
7.185  The interpretation of the "no less favourable " treatment standard under other covered 
agreements may be relevant in interpreting Article 3.1 of the TRIPS Agreement, taking account of its 
context in each agreement including, in particular, any differences arising from its application to like 
products or like services and service s uppliers, rather than to nationals.208 
7.186  Under Article III:4 of GATT 1994, the Appellate Body in US – FSC (Article 21.5 – EC)  has 
explained its approach to the examination of whether measures affecting the internal sale of products 
accord "treatment no less favourable" as follows: 
                                                      
205 Article 24.9 also provides that there shall be no obligation under this Agreement to protect GIs 
which are not or cease to be protected in  their country of origin or which have  fallen into disuse in that country. 
206 See the Panel report on US – Section 211 Appropriations Act , at paras. 8.131-8.133, the Appellate 
Body report, at para. 258.  The Appellate Body has also assessed "no less favourable" treatment in the context of 
trade in goods under Article III:4 of GATT 1994 in terms of whether the measure modifies conditions of competition:  see its report in Korea – Various Measures on Beef , paras. 137 and 144 
207 GATT Panel report on US – Section 337 , para. 5.11.   
208 In US – Section 211 Appropriations Act , the Panel considered that the jurisprudence on Article III:4 
of GATT 1994 may be useful in interpreting Article 3.1 of the TRIPS Agreement due to the similarity of their 
language:  see the Panel report at para. 8.129;  Appellate Body report at para. 242.   WT/DS290/R 
Page 56  
 
 "The examination of whether a measure involves 'less favourable treatment' of 
imported products within the meaning of  Article III:4 of the GATT 1994 must be 
grounded in close scrutiny of the 'fundamental thrust and effect of the measure itself'.  
This examination cannot rest on simple assertion, but must be founded on a careful analysis of the contested measure and of its implications in the marketplace.  At the 
same time, however, the examination need not be based on the  actual  effects  of the 
contested measure in the marketplace."
209 
7.187  Similarly, in the present dispute, the Panel c onsiders it appropriate to base its examination 
under Article 3.1 of the TRIPS Agreement on the funda mental thrust and effect of the Regulation, 
including an analysis of its terms and its prac tical implications.  However, as far as the TRIPS 
Agreement is concerned, the relevant practical impl ications are those on opportunities with regard to 
the protection of intellectual property.  The imp lications in the marketplace for the agricultural 
products and foodstuffs in respect of which GIs ma y be protected are relevant to the examination 
under Article III:4 of GATT 1994, consid ered later in this report.   
7.188  The parties disagree on whether the equivalence a nd reciprocity conditions in Article 12(1) of 
the Regulation apply to GIs located in other WTO Members outside the European Communities.  The 
Panel recalls its finding at paragraph 7.152 that they do so apply.   
7.189  Although the parties disagree on whether the e quivalence and reciprocity conditions in 
Article 12(1) of the Regulation discriminate in a ma nner inconsistent with the covered agreements, it 
is not disputed that those conditions accord less favour able treatment to persons with interests in the 
GIs to which those conditions apply.210  The Panel considers that those conditions modify the 
effective equality of opportunities to obtain protect ion with respect to intellectual property in two 
ways.  First, GI protection is not available under the Regulation in respect of geographical areas located in third countries which the Commission has not recognized under Article 12(3).  The European Communities confirms that the Commission has not rec ognized any third countries.  
Second, GI protection under the Regulation may become  available if the third country in which the GI 
is located enters into an international agreement or  satisfies the conditions in Article 12(1).  Both of 
those requirements represent a significant "extra hur dle" in obtaining protection that does not apply to 
geographical areas located in the European Communities.
211  The significance of the hurdle is 
reflected in the fact that currently no third country  has entered into such an  agreement or satisfied 
those conditions. 
7.190  Accordingly, the Panel finds that the equiva lence and reciprocity conditions modify the 
effective equality of opportunities with respect to th e availability of protection to persons who wish to 
obtain GI protection under the Regulation, to the detr iment of those who wish to obtain protection in 
respect of geographical areas located in third co untries, including WTO Members. This is less 
favourable treatment. 
                                                      
209Appellate Body Report, US – FSC (Article 21.5 – EC) , para. 215, quoting reports in Korea – Various 
Measures on Beef , para. 142, and Japan – Alcoholic Beverages II , at 110. 
210 Australia's first written submission, paras. 196, 199 and 206.  Note that the European Communities 
asserts only that the product specifications and inspection regimes for individual GIs do not constitute less favourable treatment.  With respect to the equivalence an d reciprocity conditions, it asserts that it does not apply 
them and that they do not depend on nationality, but not that they do not accord less favourable treatment where 
they apply:  see its first written submission, paras. 62-69 and 113-126.  It also concedes that they constitute less favourable treatment for the purposes of Article III:4 of GATT 1994, but does not consider that the meaning of 
the phrase is necessarily the same as in Article 3. 1 of the TRIPS Agreement:  see its responses to Panel 
questions Nos. 94(a) and 113. 
211 This was also the approach of the Appellate Body in US – Section 211 Appropriations Act  to an 
"extra hurdle" imposed only on foreign nationals:  see para. 268 of its report.   WT/DS290/R 
 Page 57 
 
 
 Nationals of other Members 
7.191  The issue for the Panel is how the less favour able treatment accorded under the Regulation 
with respect to the availability of protection affect s the treatment accorded to the nationals of other 
Members and that accorded to the European Communities' own nationals for the purposes of 
Article 3.1 of the TRIPS Agreement.  Article 1.3 de fines "nationals of other Members" in order to 
determine the persons to whom Members shall ac cord treatment, which includes national treatment.212  
It provides as follows: 
"3. Members shall accord the treatment pr ovided for in this Agreement to the 
nationals of other Members.  In respect of the relevant intellectual property right, the 
nationals of other Members shall be unders tood as those natural or legal persons that 
would meet the criteria for eligibility for protection provided for in the Paris 
Convention (1967), the Berne Convention (1971), the Rome Convention and the 
Treaty on Intellectual Property in Respect of Integrated Circuits, were all Members of 
the WTO members of those conventions. (...)" [footnote 1 omitted] 
7.192  In respect of the intellectual property rights relevant  to this dispute, it is not disputed that the 
criteria for eligibility for protection that apply ar e those found in the Paris Convention (1967).  
Articles 2 and 3 of the Paris Convention (1967) pr ovide how nationals and persons assimilated to 
nationals are to be treated.  In the Panel's view, th ese are "criteria for eligibility for protection" for the 
purposes of the TRIPS Agreement.213  
7.193  Articles 2 and 3 of the Paris Convention (1967)  refer to "nationals" without defining that 
term.  Article 3 of the Paris Convention (1967) provides for the assimilation of certain persons to 
nationals as follows: 
"Nationals of countries outside the Union who are domiciled or who have real and 
effective industrial or commercial establis hments in the territory of one of the 
countries of the Union shall be treated in the same manner as nationals of the countries of the Union." 
7.194  The rule in Article 3 of the Paris Convention (1967) only applies to nationals of countries 
outside the Paris Union.  According to Article 1.3 of the TRIPS Agreement, these criteria shall be 
understood as if "all Members of the WTO" were me mbers of that Convention.  Therefore, for the 
purposes of the TRIPS Agreement, that rule of assimi lation only applies to persons that are nationals 
of a country that is not a WTO Member .  It does not apply to nationals of other WTO Members, such 
as Australia.  Therefore, it does not mean that all persons who have a domicile or a real and effective 
industrial and commercial establishment in a WTO Member are necessarily nationals of that WTO 
Members for the purposes of the TRIPS Agreement. 
7.195  Otherwise, the Paris Convention (1967) contains no common rules on the meaning of 
"nationals".  It can be noted that the original  Paris Convention of 1883 appeared to use the term 
"subjects and citizens" and "natio nals" interchangeably.  The phrase "subjects and citizens" was 
                                                     
 
212 This can be contrasted with the detailed definitions in Article XXVIII of GATS of "natural person 
of another Member", "juridical person of another Member", "juridical person" and a juridical person "owned" or 
"controlled" by persons of a Member or "affiliated" with another person. 
213 Article 1.3 of the TRIPS Agreement also refers to the criteria for eligibility for protection in the 
Berne Convention (1971).  It can be observed that the title inserted to facilitate identif ication of Article 3 of the 
Berne Convention (1971) which concerns authors who are nationals or assimilated to nationals, also refers to "Criteria of Eligibility for Protection".  This is consiste nt with the Panel's view of the criteria in the Paris 
Convention (1967) for the purposes of the TRIPS Agreement. WT/DS290/R 
Page 58  
 
 replaced with "nationals" in Articles 2 and 3 in th e Hague Act of 1925 without , apparently, changing 
the scope of the Convention.
214   
7.196  A leading commentator on the Paris Conventio n (1967) explains the practice under that 
Convention as follows: 
"With respect to natural  persons, nationality is a qua lity accorded or withdrawn by 
the legislation of the State whose nationality is claimed.  Therefore, it is only the 
legislation of that State which can defi ne the said nationality and which must be 
applied also in other countries where it is invoked. 
"With respect to legal  persons, the question is more complicated because generally no 
'nationality' as such is granted to legal pe rsons by existing legislations.  Where these 
legal persons are the State themselves, or State enterprises, or other bodies of public 
status , it would be logical to accord to them the nationality of their country.  With 
regard to corporate bodies of private status , such as companies and associations, the 
authorities of the countries where application of the Convention is sought will have to 
decide on the criterion of 'nationality' which they will employ.  This 'nationality' can 
be made dependent upon the law according to which these legal persons have been 
constituted, or upon the law of their actual headquarters, or even on other criteria.  
Such law will also decide whether a legal person or entity really exists." [original 
footnote omitted]215   
7.197  This is consistent with the pos ition under public international law.216  With respect to the 
meaning of "nationals of other Members" for the purposes of the TRIPS Agreement, WTO Members 
have, through Article 1.3 of the TRIPS Agreement, incorporated the meaning of "nationals" as it was 
understood in the Paris Convention (1967) and under pub lic international law.  With respect to natural 
persons, they refer first to the law of th e Member of which nationality is claimed.217  With respect to 
legal persons, each Member first applies its  own criteria to determine nationality.  
7.198  The meaning of "nationals" under public internati onal law is also relevant to the meaning of a 
Member's "own nationals".  Whilst the TRIPS Agre ement does not create obligations for a Member to 
accord treatment to its own nationals, it does refer to the treatment that each Member accords to its 
own nationals as the benchmark for its obligation to accord national treatment under Article 3.1, as 
well as the other national treatment obligations incor porated by reference, including Article 2 of the 
Paris Convention (1967).  To that extent, the way in which a Member defines its own nationals can 
                                                      
214 Article 2 originally provided that "subjects a nd citizens" will enjoy the advantages granted to 
"nationals".  As early as 1897, the Chair of the Brussels  Diplomatic Conference commented that, in practice, the 
rights conferred on physical persons must belong equally to juridical persons and it seemed to be unanimously 
recognized that this was the scope of the Convention, see Actes de Paris , 1897, 3rd session, p. 196. "Subjects and 
citizens" was replaced with the word "nationals" at th e 1925 Hague Diplomatic Conference because, in its 
brevity, it was considered more comprehensive, and was c onsistent with the terminology of the Convention:  see 
Actes de Paris , 1925, report of drafting committee, p. 538.   
215 See Bodenhausen supra  at 79, pp. 27-28. 
216 See, for example, A.A. Fatouros, "National Lega l Persons in Internationa l Law" in R. Bernhardt 
(ed.), Encyclopedia of Public  International Law, Volume III (1997) pp. 495-501;  and I. Brownlie, Principles of 
Public International Law (5th edition, Oxford, 1998), p. 426, submitted to the Panel by the European 
Communities in Exhibits EC-88 and EC-115, respectively.   
217 With respect to natural persons, the Panel also notes that a State may not be bound to recognize a 
grant of nationality if it does not represent a genuine connection between the natural person and the State granting the nationality:  see the judgement of the International Court of Justice in the Nottenbohm case 
(Liechtenstein v Guatemala)  (second phase), ICJ Reports (1955), 4.  WT/DS290/R 
 Page 59 
 
 
 also be subject to review for the purposes of de termining conformity with its national treatment 
obligations under the TRIPS Agreement. 
7.199  The European Communities has explained to the Panel that, with respect to natural persons, 
under the domestic law of the European Communities,  any person who is a national of an EC member 
State is a citizen of the European Union and, accordingly, an EC national.218  It has explained that, 
with respect to legal persons, the domestic law of the European Communities does not contain a 
specific definition of nationality, but nor does the domestic law of many other WTO Members.219  
However, the European Communities informs the Pane l that any legal person  considered a national 
under the laws of an EC member State would also be an EC national.  The criteria used by the EC 
member States to determine the nationality of a le gal person may vary and include criteria such as the 
place of incorporation and the place of the seat of the company or a combination of such criteria.220   
7.200  Australia has not challenged the criteria used  by the European Communities to determine 
nationality.  The Panel notes that these criteria app ear to be the same as those used in public 
international law.221  Therefore, the Panel can use them to  determine which pers ons are "nationals" 
under Article 3.1 of the TRIPS Agreement. 
7.201  Australia has referred to the specific definition of "nationals" in footnote 1 to the TRIPS 
Agreement.222  The Panel notes that that specific defin ition only applies in the case of a separate 
customs territory Member of the WTO.  The Euro pean Communities submits that it is not such a 
Member and Australia does not assert that it is.223  Therefore, the Panel does not consider this specific 
definition further. 
7.202  Australia also refers to Article 10(2) of th e Paris Convention (1967) which sets out persons 
who shall be deemed an "interested party" for th e purposes of an obligation related to certain false 
indications.  Article 10(2) refers inter alia  to establishment in the locality or country falsely indicated.   
7.203  The Panel accepts that an "interested party" is  a person who is entitled to receive protection 
under Articles 22 and 23 of the TRIPS Agreement.  Ar ticle 10(2) is a deeming provision for the term 
"interested party" used in Article 9(3) of th e Paris Convention (1967), as made applicable under 
Article 10(1).  Once a person has qualified as a national, Article 10(2) may provide guidance on 
whether that person may be treated as an interested  party for the purposes of Articles 22 and 23 of the 
TRIPS Agreement.  However, Article 10(2) does not  set out a criterion for eligibility for protection 
under the Paris Convention (1967) for the purpo ses of Article 1.3 of the TRIPS Agreement. 
7.204  Therefore, the Panel finds no specific definition of  "nationals" applicable in this dispute and 
confirms its finding at paragraph 7.200 as to the cr iteria that can be used to determine which persons 
are "nationals" for the purposes of Article 3.1 of  the TRIPS Agreement, for the purposes of this 
dispute. 
                                                      
218 Article 8 of the EC Treaty.   
219 Article 58 of the EC Treaty prov ides that companies or firms form ed in accordance with the law of 
an EC member State and having thei r registered office, central administ ration or principal place of business 
within the European Community shall, for the purposes of Chapter 2 of the EC Treaty on the right of 
establishment, be treated in the same way as natu ral persons who are nationals of EC member States. 
220 European Communities' response to Panel question No. 105.  It also referred to a criterion based on 
the nationality of controlling shareholders, but the evidence in  support does not appear to indicate that this is of 
relevance to corporate nationa lity under the TRIPS Agreement. 
221 Supra  at 216.   
222 Australia's response to Panel question No. 23. 
223 Australia's response to Panel question No. 104. WT/DS290/R 
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 7.205  Turning to the Regulation, it is agreed that it does not, on its face, refer to "nationals".  It 
refers to the location of geographical areas, or GI s.  In theory, there may be foreign citizens or 
corporations who are entitled to use GIs located in  the European Communities and obtain protection  
under the Regulation.  The issue for the Panel is to determine the treatment accorded to the nationals 
of other Members and that accorded to the Eu ropean Communities' own nationals, when such 
treatment depends on the location of GIs.  
Formally identical provisions 
7.206  On its face, the Regulation contains formally identical provisions vis-à-vis the nationals of 
different Members, with respect to the availability of GI protection. 
7.207  It is well recognized that the concept of " no less favourable" treatment under Article III:4 of 
GATT 1994 is sufficiently broad to include situations where the application of formally identical legal 
provisions would in practice accord less favourable treatment.  The GATT Panel in US – Section 337 , 
which considered an intellectual property enforcem ent measure prior to the conclusion of the TRIPS 
Agreement, interpreted the "no less favourab le" standard under Article III:4 as follows:   
"On the one hand, contracting parties ma y apply to imported products different 
formal legal requirements if doing so  would accord imported products more 
favourable treatment.  On the other hand, it also has to be recognised that there may 
be cases where application of formally identical legal provisions would in practice accord less favourable treatment to imported products and a contracting party might thus have to apply different legal provisions to imported products to ensure that the 
treatment accorded them is in fact no less favourable."
224 
7.208  The Appellate Body in Korea – Various Measures on Beef , in a dispute concerning formally 
different treatment, quoted this passage and drew the conclusion that "[a] formal difference in 
treatment between imported and like domestic products is thus neither necessary, nor sufficient, to 
show a violation of Article III:4".225  It then proceeded to apply the relevant standard of examination. 
7.209  The Panel in Canada – Pharmaceutical Patents  also considered that claims against both 
formal and practical discrimination are possible under the TRIPS Agreement, although that dispute 
concerned minimum standards of protection in Part II and not the basic principles in Part I.226 
7.210  We consider that this reasoning applies with equal force to the no less favourable treatment 
standard in Article 3.1 of the TRIPS Agreement.  In  our view, even if the provisions of the Regulation 
are formally identical in the treatment that they accord to the nationals of other Members and to the 
European Communities' own nationals, this is not su fficient to demonstrate that there is no violation 
of Article 3.1 of the TRIPS Agreement.  Whether or not the Regulation accords less favourable 
treatment to the nationals of other Members th an it accords to the European Communities' own 
nationals should be examined instead according to th e standard we set out at paragraph 7.184, namely, 
the "effective equality of opportunities"  with regard to the protection of intellectual property rights.  In 
this examination, we will follow the approach th at we set out at paragraph 7.187, which focuses on 
the "fundamental thrust and effect" of the Regulation. 
                                                      
224 GATT Panel report on US – Section 337 , para. 5.11.   
225 Appellate Body report on Korea – Various Measures on Beef , para. 137.  This view is also 
consistent with the findings of the Appellate Body in its report on EC – Bananas III with respect to the phrase 
"treatment no less favourable" as used in the MFN obligation in relation to trade in services in Article II of 
GATS, at para. 233. 
226 Panel report on Canada – Pharmaceutical Patents , at paras. 7.100-7.105.  WT/DS290/R 
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 Which nationals to compare? 
7.211  The text of Article 3.1 expressly calls for a comparison when it provides that "[e]ach Member 
shall accord to the nationals of other Members treatment no less favourable than that it accords to its 
own nationals" (emphasis added).  Th e question arises as to which nationals  it is appropriate to 
compare.   
7.212  The Panel finds that the following graphic, b ased on one set out in Chinese Taipei's third 
party submission, provides a useful framework  for its analysis of this issue.   
1. 3. 
EC national with 
GI located in the EC EC national with 
GI located outside the EC 
2. 4. 
Non-EC national with 
GI located in the EC Non-EC national with 
GI located outside the EC 
 
Graphic 1 
 
7.213  The graphic depicts the four relevant possible combinations of nationality of persons and the 
location of a GI, each in a separate numbered quad rant.  In terms of this  graphic, the Panel's 
conclusion at paragraph 7.152 is that  the conditions of reciprocity and equivalence in Article 12(1) of 
the Regulation apply to the persons in quadrants 3 and 4 only.  There is therefore discrimination 
between the persons in quadrants 1 and 2, on the one hand, and those in quadrants 3 and 4, on the 
other hand. 
7.214  Australia submits that the Panel should compare the treatment of a hypothetical EC national 
with a GI located in the Europ ean Communities, and the treatment of a hypothetical non-EC national 
with a GI located outside the European Communities.  This is a comparison of a person in quadrant 1 
with a person in quadrant 4 in the graphic. 
7.215  The Panel recalls that the Regulation contains  formally identical provisions vis-à-vis the 
nationals of different Members.  In the absen ce of less favourable treatment based on a formal 
criterion of nationality, or a criterion that fully corre sponds with nationality, the Panel is reluctant to 
compare a hypothetical national of one Member with a national of another Member simply because they both claim rights to the same category of intell ectual property.  This is a very low threshold with 
possibly unforeseen systemic implications for all in tellectual property rights covered by the TRIPS 
Agreement.   
7.216  Australia also submits that there is discrimi nation according to nationality on the basis of a 
comparison of the group of the European Communities' own nationals who wish to obtain GI protection under the Regulation, with the group of  nationals of other WTO Members who wish to 
obtain GI protection under the Regulation.  This is  a comparison of the persons in both quadrants 1 
and 3 with the persons in both quadrants 2 and 4, in the graphic.   
7.217  The Panel recalls that the standard of ex amination is based on "effective equality of 
opportunities".  It follows that the nationals that ar e relevant to an examin ation under Article 3.1 of 
the TRIPS Agreement should be those who seek oppor tunities with respect to the same type of WT/DS290/R 
Page 62  
 
 intellectual property in comparable situations.
227  On the one hand, this excludes a comparison of 
opportunities for nationals with respec t to different categories of intellectual property, such as GIs and 
copyright.  On the other hand, no reason has been advanced as to why the equality of opportunities 
should be limited a priori to rights with a territorial link to a particular Member.228   
7.218  The Panel therefore considers it appropriate for the purposes of this claim to compare the 
effective equality of opportunities for the group of nationals of other Members who may wish to seek 
GI protection under the Regulation and the group of  the European Communities' own nationals who 
may wish to seek GI protection under the Regulation.  On this approach, there is no need to make a 
factual assumption that every person who wishes to obtain protection for a GI in a particular Member is a national of that Member.
229 
7.219  The European Communities disagrees with this approach.  It argues that the concept of 
de facto discrimination should be limited to cases of  circumvention of obligations, which is 
unnecessary in this dispute because of the applicab ility of the national treat ment obligation under 
GATT 1994.230   
7.220  The Panel is mindful of the need to ensure  a harmonious interpre tation of the national 
treatment obligation within the TRIPS Agreement it self as applied to different intellectual property 
rights.  The fact that circumvention of that obligation may be prevented, uniquely, under GATT 1994 in certain cases concerning geographical indications, does not justify a different interpretation of 
Article 3.1 of the TRIPS Agreement from that whic h would be applicable to all other intellectual 
property rights, which do not have an  inherent link to the territorial origin of a product.  The Panel's 
interpretation preserves internal coherence in the interpretation of national treatment under the TRIPS 
Agreement. 
Comparison of treatment accorded to the nationals of other Members and that 
accorded to the European Communities' own nationals 
7.221  Articles 5 through 7 of the Regulation set out a re gistration procedure for GIs that refer to a 
geographical area located within the te rritory of the European Communities.
231  Articles 12a and 12b 
                                                      
227 The Appellate Body in EC – Asbestos adopted an analogous approach to the term "like" products in 
Article III:4 of GATT 1994, which it interpreted in terms of the competitive relationship between products:  see 
its report at para. 99. 
228 See the European Communities' responses to Panel questions Nos. 25, 101 and 103. 
229 The Panel notes that its approach based on the re spective treatment accorded to groups (of nationals) 
is consistent with an approach based on the respective treatment accorded to groups (of products) contemplated 
by the Appellate Body in EC – Asbestos , in the context of the national treatment obligation in Article III:4 of 
GATT 1994:   
"... A complaining Member must still establish that  the measure accords to the group of 'like' 
 imported  products 'less favourable treatment' th an it accords to the group of 'like'  domestic  
products.  The term 'less favourable treatment' expr esses the general principle, in Article III:1, 
that internal regulations 'should not be applied … so as to afford protection to domestic production'.  If there is 'less favourable treatment' of the group of 'like' imported products, 
there is, conversely, 'protection' of the group of  'like' domestic products.  However, a Member 
may draw distinctions between products which have been found to be 'like', without, for this reason alone, according to  the group of 'like'  imported   products 'less favourable treatment' 
than that accorded to the group of 'like'  domestic   products.  ..."  at para. 100. 
230 European Communities' rebuttal submission, para. 49;  response to Panel question No. 29. 
231 This is reflected in the fact that under Article 5(4) an application under the procedures set out in 
Articles 5 through 7 shall be sent to the EC member St ate in which the geographical area is located but under 
Article 12a(1) an application under the procedures set out  in Articles 12a and 12b shall be sent to the authorities 
in the country in which the geographical area is located.  This was confirmed by the European Communities in 
its response to Panel question No. 2.  WT/DS290/R 
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 set out a registration procedure for GIs that refers to a geographical area located in third countries, 
including WTO Members.  The conditions in Article  12(1) only apply to the latter procedures and, 
hence, only to GIs that refer to geographical areas located in third countries.   
7.222  There is a link between the location of a geogra phical area to which a GI refers and certain 
persons. Article 5(1) and 5(2) provides that the fo llowing persons may apply for registration of a GI: 
1. Only a group or, subject to certain conditions to be laid down in accordance 
with the procedure provided for in Article 15232, a natural or legal person, shall be 
entitled to apply for registration. 
For the purposes of this Article, 'Group' me ans any association, irrespective of its 
legal form or composition, of producers a nd/or processors working with the same 
agricultural product or foodstuff.  Other interested parties may participate in the 
group. 
2. A group or a natural or legal person ma y apply for registration only in respect 
of agricultural products or foodstuffs whic h it produces or obtains within the meaning 
of Article 2(2)(a) or (b).   
7.223  These definitions of applicants cross-refer to the definitions of designations of origin and 
geographical indications in the Regulation in Ar ticle 2(2)(a) and (b), which provide as follows: 
"2. For the purposes of this Regulation: 
(a) 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 envi ronment with its inherent natural 
and human factors, and the production, processing and preparation of which take place in the defined geographical area; 
(b) geographical indication : means the name of a region, a 
specific place or, in excepti onal 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."  
                                                     
 
232 The European Commission has laid down in Article 1 of Commission Regulation (EEC) 
No. 2037/93 that applications for registration pursuant to Article 5 of Regulation (EEC) No. 2081/92 may be 
submitted by a natural or legal person not complying with the definition in the second subparagraph of Article 5(1) in exceptional, duly substantiated cases wh ere the person concerned is the only producer in the 
geographical area defined at the time the application is submitted.   WT/DS290/R 
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 7.224  Registration confers certain protection, but on ly agricultural products or foodstuffs that 
comply with a specification are eligible to "use" a registered GI.  Article 4(2) sets out the minimum 
requirements which must be included in a product specification, which include inter alia  "evidence 
that the agricultural product or the foodstuff origin ates in the geographical area", "a description of the 
method of obtaining the agricultural product or f oodstuff and, if appropriate, the authentic and 
unvarying local methods" and "the details bearing out  the link with the geographical environment or 
the geographical origin" (from items (d), (e) and (f),  respectively).  Any person, and not merely the 
applicant, that produces or obtains the products in accordance with the specification in the registration 
is entitled to use the GI.   
7.225  These provisions create a link between persons, the territory of a particular Member, and the 
availability of protection.  The definition of a "d esignation of origin" requires that the applicant and 
users must produce, process and prepare the produc ts covered by a registration in the relevant 
geographical area, whilst the definition of a "geograp hical indication" requires that the applicant and 
users must carry out at least one, or some combin ation, of these three activities, in the geographical 
area, and must do so in accordance with a GI specification. 
7.226  Accordingly, insofar as the Regulation discrim inates with respect to the availability of 
protection between GIs located in the European Co mmunities, on the one hand, and those located in 
third countries, including WTO Members, on the othe r hand, it formally discriminates between those 
persons who produce, process and/or prepare a produc t, in accordance with a specification, in the 
European Communities, on the one hand, and tho se persons who produce, process and/or prepare a 
product, in accordance with a specification, in th ird countries, including WTO Members, on the other 
hand.   
7.227  The Panel recalls its finding in paragraph 7.218 that it is appropriate for the purposes of this 
dispute to compare the treatment accorded to the group of nationals of other Members who may wish 
to seek GI protection under the Regulation, and the group of the European Communities' own nationals who may wish to seek GI protection under the Regulation.   
7.228  Australia argues that the reality is that persons with an interest in securing registration of the 
name of a geographical area as a GI under the Re gulation will overwhelmingly be nationals of the 
WTO Member in which that geographical area is located.
233 
7.229  The European Communities does not deny this.  It  relies on the fact that the Regulation itself 
contains no legal obstacle to foreign nationals ta king advantage of EC geographical indications and 
disputes that any person who is producing a product must necessarily have the nationality of the place 
where the product is produced.234  However, in the Panel's view, that is not dispositive of the issue. 
7.230  The Panel agrees that the vast majority of natural and legal persons who produce, process 
and/or prepare products according to a GI specification within the territory of a WTO Member party to this dispute will be nationals of that Member.  The fact that there may be  cases where such a person 
does not qualify as a national – and none has been brought to its attention – does not alter the fact that 
the distinction made by the Regulation on the basis of  the location of a GI will operate in practice to 
discriminate between the group of nationals of othe r Members who wish to obtain GI protection, and 
the group of the European Communities' own nationa ls who wish to obtain GI protection, to the 
detriment of the nationals of other Members.  This  will not occur as a random outcome in a particular 
case but as a feature of the design and structure of  the system.  This design is evident in the 
Regulation's objective characteristics, in particular , the definitions of "designation of origin" and 
                                                     
 
233 Australia's rebuttal submission, para. 184 and response to Panel question No. 102.  Brazil and 
Canada expressed the same view:  see Annex C, paras. 24 and 47. 
234 European Communities' comment on US responses to Panel questions Nos. 102 and 103.    WT/DS290/R 
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 "geographical indication" and the requirements of th e product specifications.  The structure is evident 
in the different registration procedures.   
7.231  Complete data on the persons who have actua lly availed themselves of protection under the 
Regulation is not available.  Any person who produces and/or processes and/or prepares products 
according to the specifications in a GI registration is entitled to use the GI.  Data on the persons who 
have applied for, and obtained,  protection under the Regulation and their respective addresses is 
available but their nationality is not recorded.  Howe ver, there is no clear evidence that even a single 
person who has applied for, or is entitled to use,  a registered GI is not one of the European 
Communities' own nationals. 
7.232  Whilst certain of the European Communities' own nationals may wish to obtain protection for 
GIs located outside the European Communities as well, it cannot seriously be contested that the GIs 
for which nationals of other WTO Members would wish to obtain protection are overwhelmingly 
located outside the European Communities.   
7.233  The European Communities presen ted evidence intended to sh ow that certain foreign 
nationals have actually obtained protection unde r the Regulation.  The Panel notes that all its 
examples consist of a foreign national, or a corpora tion incorporated under the laws of an EC member 
State, that acquired another corporation incorporat ed under the laws of an EC member State, which 
produces products entitled to GI protection.235  Those subsidiary corpora tions obtaining the benefit of 
protection appear to be the European Communities' own nationals, according to a place of incorporation test.  Evidence is not available on th e place of their company seat but such cases appear 
to be rare.  This evidence confirms, rather than c ontradicts, the link between the treatment accorded to 
GIs located in the European Communities and EC nationality.  
7.234  The text of the TRIPS Agreement contains a recognition that discrimination according to 
residence and establishment will be a close substitute for nationality.  The criteria set out in footnote 1 
to the TRIPS Agreement, which apply in the case of a separate customs territory Member of the 
WTO,  are clearly intended to provide close substitu te criteria to determine nationality where criteria 
to determine nationality as such are not available in a Member's domestic law.  These criteria are 
"domicile" and "real and effective industrial or co mmercial establishment".  They are taken from the 
criteria used for the assimilation of nationals in Arti cle 3 of the Paris Convention (1967).  It is clear 
that, in using these terms, the drafters of footnote  1 of the TRIPS Agreement chose terms that were 
already understood in this pre-existing intellectual property convention.  Under Article 3 of the Paris 
Convention (1967), "domicile" is not generally unders tood to indicate a legal situation, but rather a 
more or less permanent residence of a natural person,  and an actual headquarter s of a legal person.  A 
"real and effective industrial and commercial establishm ent" is intended to refer to all but a sham or 
ephemeral establishment.
236 
                                                      
235 The evidence is as follows:  Mr. Jens-Reidar Larsen, a Norwegian national, acquired a French 
cognac firm in 1928 – cognac is not a product covered by the Regulation at issue.  Sara Lee Personal Products SpA, an Italian corporation under common control with  Sara Lee Charcuterie SA, a French corporation, 
belonging to the Sara Lee group, acquired Al Ponte Prosciutto SRL, an Italian corporation;  Kraft Foods Group, 
which has an Italian subsidiary, acquired the business of Giovanni Invernizzi, an Italian, and partly sold it to Lactalis, a French dairy comp any with an Italian subsidiary;  Nestlé which sold Vismara, a salami firm, to an 
Italian company.  The persons who acquired GI protectio n in these three examples may all be the European 
Communities' own nationals.  The European Communities also refers to the website of a private beer label collector who disclaims accuracy but suggests that a Be lgian company used to produ ce a beer with a German 
GI, possibly before the Regulation entered into force.  The Panel considers this example unreliable.  See 
Exhibits EC-36, EC-61, EC-62, EC-63 and EC-89. 
236 Bodenhausen, supra  at 79, p. 33, citing Ladas, The International Protection of Industrial Property , 
pp. 187-188, and Roubier, Le Droit de la propriété industrielle  I, pp. 268-269.  This is confirmed by the Official WT/DS290/R 
Page 66  
 
 7.235  The object and purpose of the TRIPS Agreement depends on the obligation in Article 1.3 to 
accord the treatment provided for in the Agreement to the nationals of other Members, including national treatment under Article 3.1.  That object  and purpose would be severely undermined if a 
Member could avoid its obligations by simply accord ing treatment to its own nationals on the basis of 
close substitute criteria, such as place of producti on, or establishment, and denying treatment to the 
nationals of other WTO Members who produce or are established in their own countries. 
7.236  Further, the Panel recalls its finding at paragra ph 7.218 that it is appropriate for the purposes 
of this claim under Article 3.1 to compare the effective equality of opportunities for the group of 
nationals of other Members who may wish to seek GI protection under the Regulation and the group 
of the European Communities' own nationals who may wish to seek GI protection under the 
Regulation.  An objective assessment of that comparison cannot ignore the difference in treatment 
between quadrants 1 and 2 and quadrants 3 and 4 in the graphic set out earlier. 
7.237  The Panel also notes that the close link between nationality, on the one hand, and residence 
and establishment, on the other, appears to be rec ognized in the Regulation itself.  Article 12d of the 
Regulation accords a right of objection to persons, which the European Communities confirms is a 
reference to persons resident or established outsi de the European Communities, regardless of their 
nationality.
237  Yet the April 2003 amending Regulation, which inserted Article 12d, explained that it 
granted the right of objection to the nationals of other WTO Members.238   
7.238  The European Communities argues that any differe nce in treatment of the nationals of other 
Members is not attributable to the Regulation.  In its view, if a person sets up a legal entity in the area 
where the GI is located, "[i]t is si mply a practical consequence of the fact that products have to be 
produced in accordance with the product specification,  which may require that an important part of 
the production process takes place in the geographical ar ea concerned."  It argues that if, for practical 
considerations related for instance to taxation or la bour law, a person producing in conformity with a 
product specification chooses to set up a legal entity in the area where the geographical area is located, this is not related to the Regulation.
239 
7.239  The Panel considers that this constitutes part of the fundamental thrust and effect of the 
Regulation, including its practical implications, and that therefore it must be taken into account in 
assessing whether the Regulation accords less favourab le treatment.  Whilst the Regulation does not 
prevent a foreign national from producing goods with in the territory of the European Communities 
which would be entitled to use a GI, the implicati ons of its design and structure on the opportunities 
for protection are such that its different procedur es will operate to accord different treatment to the 
European Communities' own nationals and to the nati onals of other Members, to the detriment of the 
nationals of other Members.240 
7.240  Accordingly, the Panel's preliminary conclusion is that, with respect to the availability of 
protection, the treatment accorded to the group of nationals of other Members is different from, and 
less favourable than, that accorded to th e European Communities' own nationals.  
                                                                                                                                                                     
Records of the Paris Convention provided to the Panel by the International Bureau of WIPO, and quoted in 
Bodenhausen, ibid.,  p. 34. 
237 European Communities' first written submission, para. 142. 
238 See paragraph 10 of the recitals to the April 2003 amending Regulation, set out in para. 7.121. 
239 European Communities' response to Panel question No. 107. 
240 Article 8a of the EC Treaty provid es that every citizen of the Europe an Union shall have the right to 
move and reside freely within the territory of the EC me mber States.  Article 52 (in conjunction with Article 58) 
provides for the progressive abolition of restrictions on the freedom of establishment of nationals of an EC 
member State.  These provisions remove obstacles to persons who wish to produce products according to a GI specification within the territory of the European Communities, but apply to the European Communities' own 
nationals only.  WT/DS290/R 
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 Defences based on systemic considerations 
7.241  The European Communities argues th at the interpretation of the national treatment obligations 
in the TRIPS Agreement and GATT 1994 should not lead to "systematic overlap" between them.   
7.242  The Panel notes that the demonstration of less favourable treatment under each agreement 
remains a distinct exercise since national treatment  under Article 3.1 of the TRIPS Agreement ensures 
effective equality of opportunities fo r nationals with regard to the protection of intellectual property 
rights, whereas national treatment under GATT 1994 ensures equality of conditions of competition between products.
241  
7.243  The European Communities also argues that one  must take account of the absence in the 
TRIPS Agreement of a general exceptions provisi on analogous to Article XX of GATT 1994.   
7.244  The Panel notes that there is no hierarch y between the TRIPS Agreement and GATT 1994, 
which appear in separate annexes to the WTO Agreem ent.  The ordinary meaning of the texts of the 
TRIPS Agreement and GATT 1994, as well as Article II:2 of the WT O Agreement, taken together, 
indicates that obligations under the TRIPS Agreem ent and GATT 1994 can co-exist and that one does 
not override the other.  This is analogous to the finding of the Panel in Canada – Periodicals, with 
which the Appellate Bo dy agreed, concerning the respecti ve scopes of GATS and GATT 1994.242  
Further, a "harmonious interpretation" does not re quire an interpretation of one that shadows the 
contours of the other.  It is well established that the covered agreements apply cumulatively and that 
consistency with one does not necessaril y imply consistency with them all.243 
7.245  More specifically, the Panel notes that Article 8 of the TRIPS Agreement sets out the 
principles of that agreement.  Article 8.1 provides as follows: 
"1. Members may, in formulating or amending their laws and regulations, adopt 
measures necessary to protect public health and nutrition, and to promote the public 
interest in sectors of vital importance to their socio-economic and technological development, provided that such measures ar e consistent with the provisions of this 
Agreement."   
7.246  These principles reflect the fact that the agreem ent does not generally provide for the grant of 
positive rights to exploit or use certain subject matte r, but rather provides for the grant of negative 
rights to prevent certain acts.  This fundamental f eature of intellectual property protection inherently 
grants Members freedom to pursue legitimate public  policy objectives since many measures to attain 
those public policy objectives lie outside the scope of  intellectual property rights and do not require an 
exception under the TRIPS Agreement.   
7.247  The scope of the national treatment obligation in Article 3.1 of the TRIPS Agreement also 
differs from that of the national treatment obligatio n in Article III:4 of GATT 1994, as it is subject to 
certain exceptions in Articles 3.1, 3.2 and 5, one of which is inspired by the language of Article XX of 
GATT 1994.
244  There is also a series of specific exceptions  in the provisions relating to the minimum 
                                                      
241 See the Appellate Body report on Korea – Various Measures on Beef , paras. 137 and 144  and the 
GATT Panel report on US – Section 337 , para. 5.11.  
242 Panel report on Canada – Periodicals , at para. 5.17; Appellate Body report on Canada – 
Periodicals , DSR 1997:I, 449, at 465. 
243 See, for example, the Appellate Body report on Argentina – Footwear (EC) , para. 81;  and the 
Appellate Body report on Korea – Dairy , para. 74;  and the Panel reports on EC – Bananas III , para. 7.160. 
244 Article 24.9 of the TRIPS Agreement also provides that there shall be no obligation under the 
TRIPS Agreement to protect geographical indications which are not or cease to be prot ected in their country of 
origin, or which have fallen into disuse in that country. WT/DS290/R 
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 standards in Part II of the TRIPS Agreement and Pa rt VII contains a provision on security exceptions 
analogous to Article XXI of GATT 1994, but none on general exceptions.   
7.248  For all these reasons, in the Panel's view, th e fact that a general exceptions provision 
analogous to Article XX of GATT 1994 was not incl uded in the TRIPS Agreement has no impact on 
its analysis of Article 3.1.  
Conclusion with respect to Article 3.1 of the TRIPS Agreement
 
7.249  Therefore, the Panel concludes that, with respect to the equivalence and reciprocity 
conditions, as applicable to the availability of GI  protection, the Regulation accords treatment to the 
nationals of other Members less favourable than that it accords to the Eu ropean Communities' own 
nationals, inconsistently with Artic le 3.1 of the TRIPS Agreement.  
Article 2 of the Paris Convention (1967)  
7.250  Australia also makes claims under the national tr eatment obligation set out in Article 2 of the 
Paris Convention (1967).  These claims are made u nder paragraphs 1 and 2 of that article, which 
provide as follows:  
(1) Nationals of any country of the Union shall, as regards the protection of 
industrial property, enjoy in all the other countries of the Union the advantages that 
their respective laws now grant, or may he reafter grant, to nationals;  all without 
prejudice to the rights specially provided for by this Convention.  Consequently, they shall have the same protection as the latter,  and the same legal remedy against any 
infringement of their rights, provided th at the conditions and formalities imposed 
upon nationals are complied with. 
(2) However, no requirement as to domicile or establishment in the country 
where protection is claimed may be imposed  upon nationals of countries of the Union 
for the enjoyment of any industrial property rights. 
7.251  The text refers to the "countries of the Uni on" for the purposes of identifying States which 
bear the obligation to accord national treatment unde r that provision.  Howe ver, Article 2.1 of the 
TRIPS Agreement obliges WTO Members to comply wi th Articles 1 through 12, and Article 19, of 
that Convention.
245  Therefore, as a WTO Member, the European Communities owes obligations 
under Article 2 of the Paris Convention (1967), as incorporated by Article 2.1 of the TRIPS Agreement.   
7.252  With respect to the claim under paragraph 1 of Article 2 of the Paris Convention (1967), as 
incorporated by Article 2.1 of the TRIPS Agreement,  the Panel observes that, unlike Article 3.1 of the 
TRIPS Agreement, Article 2(1) of the Paris Conventi on (1967) refers to "the advantages that ... laws 
now grant, or may hereafter grant" and not to "no less favourable" treatment.  Therefore, the Panel has 
not actually reached a conclusion on this claim.  Ho wever, further findings on this claim would not 
provide any additional contribution to a positive soluti on to this dispute and are therefore unnecessary.   
7.253  With respect to the claim under paragraph 2 of Article 2 of the Paris Convention (1967), as 
incorporated by Article 2.1 of the TRIPS Agreemen t, the Panel does not consider that the Regulation 
                                                     
 
245 The Appellate Body report on US – Section 211 Appropriations Act also notes that the obligations 
of countries of the Paris Union under the Paris Convention (1967) are also obligations of WTO Members by 
virtue of Article 2.1 of the TRIPS Agreement, para. 125.    WT/DS290/R 
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 contains a requirement of domicile or establishment.246  We have found that the design and structure 
of the Regulation will operate to ensure that persons  who use a protected GI, located in the European 
Communities, will have a domicile or establishm ent within the territory of the European 
Communities.  We have also found that the avai lability of protection for GIs located in third 
countries, including WTO Members, is dependent on whether the third country in which the GI is 
located satisfies the conditions of equivalence or reci procity or enters into an international agreement 
with the European Communities.  It is irrelevant to  the protection of a GI located in a third country 
whether or not the person who seeks protection h as a domicile or establishment in the European 
Communities.   
7.254  Therefore, the Panel concludes that, with r espect to the availability of protection, the 
Regulation does not impose a requirement as to dom icile or establishment inconsistently with 
Article 2(2) of the Paris Convention (1967), as inco rporated by Article 2.1 of the TRIPS Agreement. 
(c) National treatment under GATT 1994 
(i) Main arguments of the parties 
7.255  Australia claims the Regulation is inconsistent with Article III:4 of GATT 1994 because it 
imposes conditions of reciprocity and equivalence on the availability of protection .  The agricultural 
products and foodstuffs from the European Commun ities and from third countries for which GIs may 
be registered under the Regulation are like products  in the sense of Article III:4.  The reciprocity 
condition in Article 12(1) of the Regulation refers to protection of  "corresponding products" from the 
European Communities which encompasses, at least, like products .247  It argues that the Regulation is 
a measure affecting the internal sale and/or offering for sale of imported products because imported 
products can only benefit from the Community-wid e protection under the Regulation and/or the 
esteem purportedly attached where they are registered, and imported products may not bear a registered GI even if it is the common name for a product in the country of origin and/or in the course of trade.
248  
7.256  Australia argues that the Regulation accords less favourable treatment to imported products 
because it imposes distinct additional requirements of equivalence and reciprocity for registration to 
which domestic products are not subject.  Those a dditional requirements significantly modify the 
conditions of competition for impor ted products because if another WTO Member is not willing and 
able to satisfy them, GIs from that Member are una ble to be registered and protected for products 
imported from that Member into the EC market.249   
7.257  The European Communities  responds that the Regulation is fully compatible with 
Article III:4 of GATT 1994.  It does not contest that products from the European Communities and 
from third countries falling under the scope of the Regulation may be like products , although it 
stresses that this alone does not preclude the Eu ropean Communities from applying the conditions for 
registration to individual GIs.250  It does not contest that the Regulation is a measure affecting the 
internal sale of products.251 
7.258  The European Communities argues th at the Regulation does not accord less favourable 
treatment to imported products because it does not apply the conditions in Article 12(1) to the 
                                                      
246 The Panel recalls its findings at para. 7.234 above on the meaning of those terms as understood 
under Article 3 of the Paris Convention (1967).  
247 Australia's first written submission, paras. 161-162 and 166-167. 
248 Australia's first written submission, para. 164. 
249 Australia's first written submission, paras. 168 and 179;  response to Panel question No. 32. 
250 European Communities' first written submission, paras. 195-197. 
251 European Communities' first written submission, para. 194. WT/DS290/R 
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 registration of GIs from other WTO Members.
252  It concedes that the app lication of those conditions 
would prejudice its obligations  under Article III:4 of GATT 1994.253   
(ii) Main arguments of third parties 
7.259  Brazil argues the GATT– and WTO– underlying principle of national treatment would be 
completely voided of any meaning if it were ma de conditional on requirements of reciprocity and 
adoption of equivalent legislation.254 
7.260  China argues that the different treatment accorded to GIs by the Regulation will amount to 
less favourable treatment if it is found to modi fy the conditions of competition under which like 
imported and EC products compete in the EC ma rket to the disadvantage of imported products.255 
7.261  New Zealand  considers that the complainant has dem onstrated all three elements constituting 
a violation of Article III:4 of GATT 1994.  The only  issue under debate is whether the Regulation 
confers "less favourable treatment" on imported products.  As the same phrase is used in Article 3.1 of the TRIPS Agreement, all arguments raised in  relation to that claim apply equally here.
256 
(iii) Consideration by the Panel 
7.262  The Panel notes that the European Communities concedes that the conditions of equivalence 
and reciprocity in Article 12(1) of the Regulation, if applied to WTO Members, are inconsistent with 
Article III:4 of GATT 1994.257  Given that the Panel has found that the Regulation "as such" imposes 
those conditions on the registration of GIs located in other WTO Members, there is no longer any defence before the Panel to the claim that, in th is respect, the Regulation is inconsistent with 
Article III:4 of GATT 1994.  It suffices to recall below that the essential elemen ts of an inconsistency 
with Article III:4 are all met in this claim.  These are that the imported and domestic products at issue 
are "like products";  that the measure at issue is  a "law, regulation, or requirement affecting their 
internal sale, offering for sale, purchase, transportatio n, distribution, or use";  and that the imported 
products are accorded "less favourable" treatment than that accorded to like domestic products.
258   
7.263  The Regulation sets down requirements concerning the use of certain names in the 
presentation for sale of agricultural products and foodstuffs.259  It is therefore a law or regulation 
affecting the internal sale and offering for sale of  products within the meaning of Article III:4 of 
GATT 1994.  This is not altered by the fact that  the Regulation is also an intellectual property 
measure covered by the TRIPS Agreement sin ce GATT 1994 and the TRIPS Agreement apply 
cumulatively.260   
                                                      
252 European Communities' first written submission, para. 203;  rebuttal submission, para. 212. 
253 European Communities' response to Panel question No. 94. 
254 Annex C, para. 25. 
255 Annex C, para. 95. 
256 Annex C, para. 141. 
257 European Communities' response to Panel question No. 94(a). 
258 These three elements are also set out in the Appellate Body report on Korea – Various Measures on 
Beef at para. 133. 
259 Article 1(1) of the Regulation provides that it "lays down rules on the protection of designations of 
origin and geographical indications of agricultural products ... and of ... foodstuffs ..." and Commission 
Regulation (EEC) No. 2037/93 sets out detailed rules on the application of the Regulation with respect to use of 
the PDO and PGI logos in the promotion of products.  (see Exhibit COMP-2).  Article 13(1) of the Regulation 
sets out uses against which registered names are protected. 
260 The Panel recalls its comment on the order of analysis in para. 7.87 and its findings in para. 7.244, 
that there is no hierarchy between GA TT 1994 and the TRIPS Agreement, which appear in separate annexes to  WT/DS290/R 
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 7.264  The Regulation links the protection of the name of a product to the territory of a particular 
country.261  In the case of "designations of origin", as define d in Article 2 of the Regulation, this is the 
place of production, processing and preparation of the product and, in the case of "geographical indications", as defined in Article 2 of the Regul ation, this is the place of production, processing 
and/or preparation.  It is not disputed that in most  cases these criteria are sufficient to confer origin on 
the products.  Given that the Panel has found that  the protection of names of products from other 
WTO Members is contingent on satisfaction of certain  conditions of equivalence and reciprocity that 
do not apply to the names of products from the European Communities, the Regulation formally 
discriminates between imported prod ucts and products of European Communities origin within the 
meaning of Article III:4 of GATT 1994.   
7.265  The Regulation applies to the names of a wide class of products described in Article 1(1), 
which refers to the large number of agricultural products intended for human consumption referred to 
in Annex 1 to the EC Treaty as well as 13 additio nal types of agricultural products and foodstuffs 
listed in the annexes to the Regulation.  The Eur opean Communities does not contest that there are, 
among this group, "like products" among the im ported products and products of European 
Communities origin.  The European Communities and other WTO Members produce the same types 
of covered agricultural products a nd foodstuffs with GIs that may be eligible for protection.  
Article 13(1)(a) of the Regulation provides that protec tion is provided against use of a name in respect 
of products "comparable to the products registered under that name".  It is axiomatic that one must 
compare apples with apples and oranges with oranges.   In this dispute, it is not contested that 
Tasmanian apples may be like pommes de Savoie
262 and Florida citrus may be like cítricos 
valencianos263 for the purposes of Article III:4 of GATT 1994.   
7.266  In our analysis of the question of "less favourab le treatment", we follow the approach of the 
Appellate Body in Korea – Various Measures on Beef  and US – FSC (Article 21.5 – EC) that this 
standard should be assessed under Article III:4 of  GATT 1994 by examining whether the measures at 
issue modify the conditions of competition between  domestic and imported pr oducts in the relevant 
market to the detriment of imported products.  This examination must closely scrutinize the 
"fundamental thrust and effect of the measure itself" founded on a careful analysis of the contested measure and of its implications in the marketplace.
264   
7.267  The Regulation provides in Article 13 that regist ered GIs shall be protected against certain 
commercial uses and other practices.  Registration provides the legal means to prevent the sale and 
offering for sale of products, including competitive products, where they use, imitate or evoke a 
registered GI, which is a substantive advantage conferred on products that comply with the GI 
registration.  Registration does not grant a right to exclude competition, or deny the possibility of sale without a registered GI but, where products, includi ng competitive products, bear an indication that 
falls within the protection granted by registration,  they may be removed from sale.  This is a 
substantive advantage that affects the conditio ns of competition of the relevant products.    
7.268  The declared purposes of the Regulation set out in its preamble include the following, which 
links GIs to demand for products: 
                                                                                                                                                                    
 
the WTO Agreement.  Further, an intellectual property measure was the subject of conclusions under 
Article III:4 of GATT 1947 in  the GATT Panel report on US – Section 337 .  The Panel does not consider that 
the conclusion of the TRIPS Agreement reduced the scope of application of GATT:  see, on the same point with 
respect to GATS, the Appellate Body report on Canada – Periodicals , DSR 1997:I, 449, at 465.  
261 Exceptionally, it may extend across a border of more than one country, see Articles 5(5) and 12a(1) 
of the Regulation. 
262 Registered by Commission Regulation (EC) No. 1107/96, p. 13, Exhibit COMP-3a. 
263 Registered by Commission Regulation (EC) No. 865/2003, Exhibit COMP-4b.i. 
264 See the Appellate Body report on Korea – Various Measures on Beef , paras. 137 and 142; and also 
US – FSC (Article 21.5 – EC) , para. 215, quoted at para. 7.186 above.   WT/DS290/R 
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 "Whereas, moreover, it has been observed in  recent years that consumers are tending 
to attach greater importance to the quality of foodstuffs rather than to quantity;  
whereas this quest for specific products generates a growing de mand for agricultural 
products or foodstuffs with an identifiable geographical origin;" 
7.269  Agricultural products and foodstuffs from the European Communities may obtain this 
advantage where they satisfy the eligibility criteri a in the Regulation. Like products imported from 
WTO Members that the Commission has not decided me et the equivalence and reciprocity conditions 
in Article 12(1) of the Regulation – which is all of them – are not able to obtain that advantage and, 
hence, are accorded less favourable treatment.  Products from WTO Members which can satisfy the 
equivalence and reciprocity conditions in Article 12(1) still face an "extra hurdle" in obtaining the 
advantage of registration since the Commission must d ecide that their country of origin meets those 
conditions – a step which is not required of like products from the European Communities.  This is 
also less favourable treatment.  
7.270  The European Communities does not contest that these are benefits of protection under the 
Regulation.  It refers to the right to use the d esignation and logo under Article  8 and the possibility of 
excluding others from use of the GI under Article 13.
265 
7.271  The Panel also notes that there is the possib ility that a WTO Member could conclude an 
international agreement with th e European Communities for the pr otection of specific GIs for its 
agricultural products and foodstuffs.  It is not in  dispute that this possibility would provide less 
favourable treatment to imported agricultural prod ucts and foodstuffs than the procedure for the 
registration of GIs provides for agricultural produc ts and foodstuffs from the European Communities. 
7.272  Therefore, the Panel concludes that, with respect to the equivalence and reciprocity 
conditions, as applicable to the availability of pr otection, the Regulation accords less favourable 
treatment to imported products, inconsis tently with Article III:4 of GATT 1994.266   
7.273  The European Communities has not asserted that , with respect to the availability of 
protection, the Regulation is justif ied by Article XX(d) of GATT 1994.267 
7.274  Australia argues that less favour able treatment is accorded by the European Communities' 
"inability to state clearly" what is required by Ar ticle 12 of the Regulation, or to state the decision-
making criteria that would govern the assessments required to be made under Article 12 of the 
Regulation.268  However, the Panel notes that, given the European Communities' defence that it did 
not apply the conditions in Article 12 to WTO Me mbers, there was little discussion of what precisely 
is required by those conditions.  In view of the Panel's conclusion, it is unnecessary to consider this 
issue further. 
7.275  Australia also argues that the disadvantage ac corded by the Regulation to imported products 
bearing a GI located in another Member is "cum ulative", by reference to the equivalence and 
                                                      
265 European Communities' rebuttal submission, para. 118. 
266 This conclusion is without prejudice to the Panel' s examination of the inspection structures required 
for registration, considered later in this report. 
267 See the European Communities' first written su bmission, paras. 224-225, in which it asserts 
Article XX(d) as a defence only in relation to Article  12a, in conjunction with Articles 4 and 10, of the 
Regulation.  See also its rebuttal submission, paras. 22 8-242, and its second oral statement, paras. 132 and 135, 
in which it assert Article XX(d) as a defence only with  respect to inspections, application procedures and the 
labelling requirement.  Despite broader references to th e Regulation in its first written submission , para. 190, 
and first oral statement, para. 73, the European Communities did not prov ide any specific arguments in defence 
of the equivalence and reciprocity conditions under Article XX(d). 
268 Australia's first written submission, para. 177.  WT/DS290/R 
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 reciprocity conditions, the application procedures,  the regulatory committee (considered below) and 
the two factors in paragraph 7.274.269  However, given that Australia did not elaborate on how the 
cumulative effect of these aspects of the Regul ation allegedly accords less favourable treatment 
distinct from that accorded by each  of them separately, the Panel does not consider it necessary to 
consider this issue further. 
2. Application procedures 
(a) Description of application procedures under Articles 5 and 12a of the Regulation 
7.276  The parties agree on the features of the application procedures under the Regulation.  There 
are separate provisions setting out the procedures for applications for registration of GIs which apply 
according to the location of the GI.270  Article 5 applies where it is located in an EC member State.  
Article 12a applies where the GI is located in a third country. 
7.277  Article 5(4) and 5(5) provide, relevantly, as follows: 
"4. The application shall be sent to th e Member State in which the geographical 
area is located. 
5. The Member State shall check that the application is justified and shall 
forward the application, including the produc t specification referred to in Article 4 
and other documents on which it has based its decision, to the Commission, if it considers that it satisfies the requirements of this Regulation.  [...]" 
7.278  Article 12a(1) and 12a(2) provide, relevantly, as follows: 
"1. In the case provided for in Article 12(3), if a group or a natural or legal 
person as referred to in Article 5(1) and (2) in a third country wishes to have a name 
registered under this Regulation it shall send a registration application to the 
authorities in the country in which the geographical area is located.  [...] 
2. If the third country referred to in paragraph 1 deems the requirements of this 
Regulation to be satisfied it shall tran smit the registration application to the 
Commission accompanied by: 
(a) a description of the legal provisions an d the usage on the basis of which the 
designation of origin or the geographical indication is protected or established in the country, 
(b) a declaration that the structures provided for in Article 10 are established on 
its territory, and 
(c) other documents on which it has based its assessment." 
7.279  After an application is forwarded by an EC member State or a third country, Articles 6(1) and 
12b(1) of the Regulation oblige the Commission to verify whether the registration application includes all the requisite particulars and satisfies th e conditions for protection.  There are differences 
                                                     
 
269 Australia's first written submission, para. 178;  response to Panel question No. 32. 
270 For the sake of brevity, the Panel refers to a name  that refers to a geogra phical area located in a 
Member as a GI located in that Member. WT/DS290/R 
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 in the drafting of Articles 6(1) and 12b(1) which rela te, respectively, to applications forwarded by EC 
member States and those transmitted by third coun tries which Australia has not put in issue.   
(b) National treatment under the TRIPS Agreement 
(i) Main arguments of the parties 
7.280  Australia claims that the Regulation is inconsistent  with Article 3.1 of the TRIPS Agreement 
and Article 2 of the Paris Convention (1967), as incor porated by Article 2.1 of the TRIPS Agreement, 
because non-EC nationals seeking to register a GI lo cated in the territory of another WTO Member 
are not able to apply for registration directly to the European Communities – whether to the Commission or another Community-level body.  Ar ticles 12(3) and 12a of the Regulation, read 
together, require that another WTO Member in  which the GI is located pre-approve every 
application.
271  The European Communities has an obliga tion to provide the means for intellectual 
property right holders to exercise their rights without intervention by another government.272 
7.281  Australia argues that the legally defined ri ghts and obligations between the European 
Communities and EC member States and EC member State nationals makes the registration process for EC nationals fundamentally different for non-EC nationals.
273  Australia adopts Canada's portrayal 
of the issues concerning the relationship between WTO Members, the European Communities, the EC 
member States and nationals.  If the subject matt er of this dispute lies within the exclusive 
competence of the European Communities, not EC me mber States, then any functions carried out by 
EC member States in implementing the Regulation are carried out as sub-national units of the European Communities.  Any outward appearance of symmetry of treatment therefore masks a 
fundamentally different situation.
274  Australia would transmit an application for registration to the 
Commission if it became aware of one from within Australia, but it could not state positively that it 
could meet the equivalence and reciprocity conditions.275 
7.282  Australia also claims that the Regulation imposes a requirement of establishment in the 
European Communities inconsistently with Ar ticle 2(2) of the Paris Convention (1967).276  
7.283  The European Communities  responds that this claim must fail.  Its first defence is that the 
application procedures do not apply to nationality but according to the location of geographical areas.  
That defence has been considered above. 
7.284  The European Communities argues that th e application procedures do not accord less 
favourable treatment because the role of third country govern ments corresponds exactly to that of EC 
member States.  The transmission of applications  by governments in fact ensures equal treatment.277  
The authorities of third countries and EC member St ates are best placed to evaluate whether a GI 
fulfils the conditions for protection, which requires familiarity with a host of factors and may require 
knowledge of the market conditions in the country of origin.  The evaluation of whether a GI is 
protected in the country of origin requires the implication of the authorities of the third country.  Verification in a third country calls for respect fo r its sovereignty.  Involvement of third country 
                                                     
 
271 Australia's first written submission, paras. 17 2 and 198;  first oral statement, para. 34. 
272 Australia's response to Panel question No. 38. 
273 Australia's first written submission, para. 205;  first oral statement, para. 34. 
274 Australia's rebuttal submission, paras. 174-176, citing Canada's third party oral statement; and 
Australia's second oral  statement, para. 77. 
275 Australia's response to Panel question No. 38. 
276 Australia's first written submission, paras. 198 and 206.  
277 European Communities' first written submission, para. 130.  WT/DS290/R 
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 authorities facilitates cooperation durin g the registration process and should be of practical benefit to 
the applicant.278 
7.285  The European Communities argues that the verification and transmission of an application are 
not overly burdensome for another WTO Member.  Another WTO Member cannot invoke its own 
unwillingness to cooperate in the registration process in order to demonstrate a national treatment 
violation on the part of the EC.279  There are many examples of international cooperation between 
governments in the protection of private rights in cluding, in the field of intellectual property 
protection, such as the Madrid Protoc ol, the Lisbon Agreement and Article 6 quinquies A(1) of the 
Paris Convention, and in the fields of certificat es of origin, technical standards, conformity 
assessment, transport, fisheries and judicial coop eration.  These examples illustrate that in an 
increasingly interdependent world, the effective protection of individual rights in cross-border 
situations inevitably engenders a need for cross-border cooperation.280 
7.286  The European Communities does not want to im pose obligations on third countries, but the 
protection of GIs located in the territory of thir d countries depends on their cooperation.  This is 
partially mandated by the definition of a GI in Article 22.1 of the TRIPS Agreement, which requires 
verification of whether certain characteristics of a good are essentially attributable to its geographical 
origin.  This is an obligation for all Members and should normally facilitate the examination of 
whether the name fulfils the criteria in the Regulation.  The description of how a GI is protected in its country of origin reflects the provision in Article 24. 9 of the TRIPS Agreement.  Even where there is 
no specific registration system in the country of origin, that is still a TRIPS requirement for the 
European Communities and a matter of foreign law.
281  The transmission of the application by the 
same government is not a significant extra burden.282   
(ii) Main arguments of third parties 
7.287  Argentina , Brazil , India , Mexico, New Zealand and Chinese Taipei all inform the Panel 
that they are not aware of any person ever having a ttempted to file with thei r respective authorities an 
application for registration under the Regulation.283  
7.288  Argentina expresses uncertainty regarding the consiste ncy of the application procedures with 
the characterization of intellectual property rights under the TRIPS Agreement, in that they require 
States to manage the registration of a GI instead of right holders who are private persons.284  
7.289  Brazil argues that the application procedures require WTO Members to "pre-approve" 
applications before they forward them to the Eu ropean Commission, which is a striking violation of 
the national treatment obligation in Article 3.1 of th e TRIPS Agreement for two reasons:  (1) this is an 
additional procedure for other WTO Members;  and (2) the approval process must be conducted 
according to EC law, not the law of the other WTO Member. 285 
7.290  China argues that the provisions on verification and publication do not afford clarity.  The 
procedures for EC member States and third countries are in parallel but are not th e same in substance.  
The provisions on verification by, and transmission to, the Commission differ between the procedures 
which suggests that third countries must sa tisfy more than an EC member State. 
                                                      
278 European Communities' response to Panel question No. 33;  rebuttal submission, paras. 124-129. 
279 European Communities' first written submission, para. 131. 
280 European Communities' response to Panel question No. 37. 
281 European Communities' rebuttal submission, paras. 131-134;  response to Panel question No. 114. 
282 European Communities' rebuttal submission, para. 139.   
283 See their respective responses in Annex C, paras. 18, 32, 103, 118, 160 and 179. 
284 Annex C, paras. 7-15. 
285 Annex C, para. 27. WT/DS290/R 
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 7.291  Colombia expresses uncertainty as to whether the country of origin must in all cases provide 
a declaration under Article 12a(2) with a descripti on of the legal provisions under which the GI is 
protected.  This is, in practice, a condition which en tails an evaluation of the system of GI protection 
in the country of origin contrary to Article 1.1 of the TRIPS Agreement.
286 
7.292  Mexico refers to cochineal as a practical exampl e of the way in which Mexican producers 
would be required to go through specifi c procedures which EC nationals are not.287  
7.293  New Zealand submits that, although the requirement  to submit all applications through 
government applies equally to applications from EC member States and other WTO Member 
nationals, its effect is to disadvantage nationals from other WTO Members.  EC nationals have an 
enforceable right that applications that satisfy the requirements of the Regulation are forwarded to the 
Commission.  Submission of an application via an EC member State is essentially a formality.  Other 
WTO Member nationals have no such enforceable right.288 
(iii) Consideration by the Panel 
7.294  These claims are made under the national treatme nt obligations in Article 3.1 of the TRIPS 
Agreement and Article 2 of the Paris Convention ( 1967), as incorporated by Article 2.1 of the TRIPS 
Agreement.  The Panel will first consider the claim under Article 3.1 of the TRIPS Agreement. 
7.295  The Panel recalls that two elements must be sa tisfied to establish an inconsistency with this 
obligation:  (1) the measure at issue must apply with  regard to the protection of intellectual property;  
and (2) the nationals of other Members must be  accorded "less favourable " treatment than the 
Member's own nationals.  The Panel will a ddress each of these elements in turn.  
Protection of intellectual property  
7.296  This claim concerns procedures for filing and ex amination of applications for registration of 
"designations of origin" and "geographical indicati ons", as defined in the Regulation.  They are 
referred to in this report, for the sake of brevity, as "application procedures". 
7.297  The Panel recalls that the national treatment ob ligation in Article 3 of the TRIPS Agreement 
applies to the treatment accorded by a Member "with regard to the protection of intellectual property".  
Footnote 3 provides an inclusive definition of the te rm "protection" as used in Articles 3 and 4.  It 
reads as follows: 
"For the purposes of Articles 3 and 4, 'protection' shall include matters affecting the 
availability, acquisition, scope, maintenance and enforcement of intellectual property 
rights as well as those matters affecting the use of intellectual property rights specifically addressed in this Agreement." 
7.298  Turning to the Regulation, procedures for the filing and examination of applications for 
registration are matters affecting the acquisition of intellectual property rights in relation to 
"designations of origin and "geographical indications", as defined in the Regulation.  It is not disputed 
that "designations of origin" and "geographical indicat ions", as defined in the Regulation, are a subset 
of "geographical indications", the subject of Section 3 of Part II, and therefore part of a category of 
intellectual property within the meaning of Article 1.2 of the TRIPS Agreement.   
                                                     
 
286 Annex C, para. 99. 
287 Annex C, paras. 115-117. 
288 Annex C, paras. 136-137.  WT/DS290/R 
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 7.299  Therefore, this claim concerns the "protecti on" of intellectual property, as clarified in 
footnote 3 to the TRIPS Agreement, within the scope of the national treatment obligation in 
Article 3.1 of that Agreement. 
Less favourable treatment accorded to the nationals of other Members  
7.300  The Panel recalls its findings: 
(a) at paragraphs 7.221 to 7.239 as to the treatme nt accorded to the "nationals of other 
Members" under the Regulation by its treatment according to the location of GIs; and 
(b) at paragraph 7.184 that under Article 3.1 of the TRIPS Agreement we must examine 
the "effective equality of opportunities" with regard to the protection of intellectual 
property rights and, at para graph 7.187 that in this ex amination we will focus on the 
"fundamental thrust and effect" of the Regulation. 
7.301  The parties and third parties who responded to the Panel's question on this point all reported 
that they were not aware of any application for the registration of a name of an area located in a third 
country outside the European Communities ever ha ving been filed with the authorities of a third 
country.289  However, Australia challenges the Regul ation, in this respect, "as such".  
7.302  Australia claims that the treatment acco rded under the application procedures in 
Article 12a(1) and (2) is less favourable treatme nt than that accorded under the applications 
procedures in Article 5(4) and (5).  There is an  apparent equivalence in the drafting of these 
provisions but the question is whether this would imply a modification of the effective equality of 
opportunities with regard to the protection of intellectual property.  
7.303  The Panel notes that the initial steps in the application procedures can be broken down as 
follows. 
(a) as a first step, all applicants are required to submit their application to the authorities 
in the country in which the geographical ar ea is located.  These will be authorities of 
an EC member State or a third country, depending on the case;   
(b) as a second step, the authorities who receive  an application consider whether the 
application is justified or satisfies the requi rements of the Regulation.  This involves a 
detailed examination of the application in accordance with the criteria in the 
European Communities' Regulation, not the domestic law of the country where the 
application is filed;  and 
(c) as a third step, if the authorities who receive an application consider that the 
application is justified or satisfies the requirements of the Regulation, they forward or 
transmit it to the Commission.  If the appli cation concerns a geographical area located 
outside the European Communities, the aut horities must also transmit a description of 
                                                      
289 However, the United States provided evidence from the Idaho Potato Commission that it could not 
obtain protection for its US certification mark in the Europ ean Union.  Its attorneys in  three EC member States 
had advised that there were no steps it could take to stop use of the term "Idaho" by other companies in Europe.  
The European Communities responds that this is based on a misperception of the content of the Regulation, that it does not contain evidence of an attempt to register a GI  under the Regulation, and that it seems to relate more 
to the protection of trademarks than GIs:   see its rebuttal submission, para. 85. WT/DS290/R 
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 the protection of the GI in its country of origin, as well as a declaration concerning 
inspection structures.
290   
7.304  We recall the European Communities' e xplanation of its domestic constitutional 
arrangements, set out at paragraph 7.148, that Community laws are generally not executed through 
authorities at Community level but rather through r ecourse to the authorities of its member States 
which, in such a situation, "act de facto  as organs of the Community, for which the Community would 
be responsible under WTO law and international law in general".291  It follows that any application 
relating to a geographical area located in an EC member State is filed directly with a " de facto  organ 
of the Community" which also carries out the initia l examination.  An application relating to a 
geographical area located in a third country cannot be filed directly, but must be filed with a foreign 
government.  This is a formal difference in treatment. 
7.305  Further, Article 5 of the Regulation provides fo r application procedures for GIs located in the 
European Communities.  Paragraph 6 provides as follows: 
"6. Member States shall introduce the laws, regulations and administrative 
provisions necessary to comply with this Article." 
7.306  An EC member State has an obligation to est ablish application procedures for the purposes of 
the Regulation.  Under Community law, an EC member State has an obligation to examine an 
application and decide whether it is justified and, if it is justified, to forward it to the Commission.  A 
group or person who submits an application in an  EC member State may enforce these obligations 
through recourse to judicial procedures based on the Regulation.  In contrast, a third country 
government has no obligation under Community law or any other law to examine an application or to 
transmit it or any other document to the Commission.   A group or person who submits an application 
in a third country has no ri ght to such treatment.   
7.307  Therefore, applicants for GIs that refer to geographical areas located in third countries do not 
have a right in the application procedures that is  provided to applicants for GIs that refer to 
geographical areas located in the Eu ropean Communities.  Applicants in third countries face an "extra 
hurdle" in ensuring that the authorities in those countries carry out the functions reserved to them 
under the Regulation, which applicants in EC me mber States do not face.  Consequently, certain 
applications and requisite supportin g documents may not be examined or transmitted.  Each of these 
considerations significantly reduces the opportuniti es available to the nationals of other WTO 
Members in the acquisition of rights under the Re gulation below those available to the European 
Communities' own nationals.  
7.308  The European Communities submits that that "[t] he Regulation does not require anything that 
would be outside the scope of any WTO Member with a normally functioning government".292  The 
Panel notes that, whilst a normally functioning government might have the capacity to carry out the first and third steps, it cannot be assumed that it would have the capacity to carry out the examination 
according to EC law required by the second step.  WTO Members have no obligation to implement a 
system of protection for geographical indications comparable to that of the European Communities 
and there is no reason to believe that they w ould nevertheless have the capacity to carry out 
examinations of technical issues that involve interpre tations of EC law.  In this regard, we note that 
one third party in this Panel proceeding indicates  that its authorities w ould be devoid of legal 
                                                     
 
290 For the purposes of this report, references to examination and transmission of "applications" include 
examination and transmission of these supporting documents.  Inspection structures requirements are considered 
later in this report. 
291 European Communities' second oral statement, para. 148. 
292 European Communities' rebuttal submission, para . 141;  second oral statement, para. 142.   WT/DS290/R 
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 competence to perform this analysis.293  Whilst a WTO Member that provided equivalent protection 
under its domestic law might presumably have the tec hnical capacity, if not the legal competence, to 
perform this analysis, the provision of such protec tion forms part of the conditions under Article 12(1) 
of the Regulation.  We have found that require ment, as a precondition to the availability of GI 
protection, to be inconsistent with the national treatment obligations in the TRIPS Agreement and 
GATT 1994. 
7.309  In any event, even if any normally functioni ng government could perform these three steps, 
that would not alter the Panel's conclusion.  The obligation to accord national treatment with respect 
to a measure of the European Communities is the ob ligation of the European Communities.  This is 
highlighted in the text of Article 3.1 of the TRIPS Agreement under which "[e]ach Member"  shall 
accord to the nationals of other Members no less favourable treatment. 
7.310  In accordance with its domestic law, the Europ ean Communities is entitled to delegate certain 
functions under its measure to the authorities of EC  member States.  However, under the Regulation, 
the European Communities has purported to delegate part of this obligation to other WTO Members, 
who must carry out these three steps in the appli cation procedures in order to ensure that no less 
favourable treatment is accorded to their respective nationals.  To that extent, the European 
Communities fails to accord no less favourable treatment itself  to the nationals of other Members.   
7.311  The Panel notes that the European Commission doe s not have the discretion to ensure that 
applications for GIs that refer to geographical areas located in third countries receive no less favourable treatment than those located in the Eu ropean Communities because it has structured the 
Regulation in such a way that certain func tions are completely outside its control. 
7.312  The European Communities drew the Panel's a ttention to many examples of international 
cooperation in the protection of private rights, including in the field of intellectual property protection.
294  The Panel notes that under two of them, th e Patent Cooperation Treaty and the Madrid 
Protocol, the possibility of filing an application with  an office in the applicant's own country does not 
prevent the applicant filing an application directly  in the another country.  The Panel certainly does 
not intend to discourage interna tional cooperation.  However, in each of these examples, cooperation 
is provided in the framework of treaties in whic h contracting parties have voluntarily agreed to 
participate.  In contrast, the Regulation is a domestic law adopted by one Member. 
7.313  The Panel also confirms that nothing in these findings purports to diminish the rights of 
Members under Article 24.9 of the TRIPS Agreemen t, which provides, in essence, that there is no 
obligation under this Agreement to protect geographi cal indications which are not protected in their 
country of origin.295   
7.314  The Panel further confirms that the European  Communities is entitled, under Article 62.1 of 
the TRIPS Agreement, to require that applicants  comply with reasonable procedures and formalities 
that are consistent with the Agreement in order to prove that they meet the conditions of protection.  
However, Article 62 is outside th e Panel's terms of reference. 
7.315  The Panel recalls its finding at paragraph 7. 248 that the fact that a general exceptions 
provision analogous to Article XX of GATT 1994 was not included in the TRIPS Agreement has no impact on its analysis of Article 3.1. 
                                                     
 
293 See comments by Brazil in Annex C, para. 32. 
294 See European Communities' response to Panel question No. 37, and Exhibits EC-20 through EC-27. 
295 Nothing in these findings purports to diminish the rights of Members under Article 5 of the TRIPS 
Agreement either. WT/DS290/R 
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 7.316  For the above reasons, the Panel concludes that, with respect to the application procedures, 
insofar as they require examination and transmission of applications by governments, the Regulation 
accords other WTO Member nationals less favourab le treatment than it accords the European 
Communities' own nationals, inconsistently w ith Article 3.1 of the TRIPS Agreement.  
7.317  In view of that conclusion, it is unnecessary to  consider the consiste ncy of the Regulation, 
with respect to the application procedures, with  Article 2(1) of the Paris Convention (1967), as 
incorporated by Article 2.1 of the TRIPS Agreemen t.  With respect to Article 2(2) of the Paris 
Convention (1967), the Panel recalls its finding at  paragraph 7.251 and, for the same reasons, 
concludes that, with respect to the applica tion procedures, the Regulation does not impose a 
requirement of domicile or establishment inconsis tently with that provision, as incorporated by 
Article 2.1 of the TRIPS Agreement. 
(c) National treatment under GATT 1994 
(i) Main arguments of the parties 
7.318  Australia claims that the Regulation is inconsiste nt with Article III:4 of GATT 1994 because 
it requires the WTO Member in whose territory a geographical area is located to pre-approve each and 
every application for registration.  This is a di stinct and additional requi rement imposed on products 
imported into the European Communities which si gnificantly modifies the conditions of competition 
for imported products vis-à-vis domestic like products in the EC market.  Any outward appearance of 
symmetry of treatment therefore masks a fundamentally different situation, for the reasons given earlier.
296   
7.319  Australia argues that the relevant aspects of th e application procedures are not justified under 
Article XX(d) of GATT 1994.  They do not satisfy the "necessary" test in paragraph (d) because, as in 
Korea – Various Measures on Beef , alternative measures are reasonably available.  The European 
Communities could leave it to the applicant to provide  the required information and/or it could ask for 
the cooperation of another WTO Member government af ter an application has been filed should such 
cooperation be necessary to enable an application to  be assessed.  They do not satisfy the chapeau of 
Article XX because if the term is already regi stered, the applicant could provide a registration 
certificate as readily as the third country government.  As in US – Shrimp , the Regulation requires 
other WTO Members to adopt a regulatory framework that is not merely comparable but essentially the same.
297 
7.320  The European Communities responds that this claim must fail.  It reiterates its arguments 
that the application procedures provide equal treatment, not less favourable treatment.298 
7.321  The European Communities asserts that verifica tion and transmission of applications by the 
government of the home country of the GI is justified by Article XX(d) of GATT 1994.299  It argues 
that this is necessary to secure co mpliance with the Regulation itself, in particular, the definition of a 
GI, the product specifications, protection in the c ountry of origin, establishment of the inspection 
structures and the requirement that only products th at comply with a specification bear the PDO and 
PGI indications.  It argues that the cooperation of the home government is indispensable for the 
implementation of the Regulation which, in partic ular, requires the evaluation of factual and legal 
questions which only the home country of the GI is  in a position to carry out.  These requirements for 
cooperation do not go beyond what is necessary for the implementation of the Regulation.  The 
                                                      
296 Australia's first written submission, paras. 172-174. 
297 Australia's second oral statement paras. 66-70. 
298 European Communities' first written submission, para. 207;  rebuttal submission, para. 218. 
299 European Communities' rebuttal submission, paras. 237-239.    WT/DS290/R 
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 requirement of transmission follows naturally from the required intergovernmental cooperation and is 
not particularly burdensome for WTO Members.  Ar ticle XX(d) does not exclude that the measures 
and the laws and regulations with which they secure compliance may be part of the same legal act.  In 
addition, there is nothing which limits measures which secure compliance to ex post enforcement and 
excludes safeguards in the registration process.  Th e Regulation is not inconsistent with GATT 1994 
because it implements an obligation under Article 22 of the TRIPS Agreement and a higher level of 
protection permitted by Article 1.1.  It is applie d in a manner consistent with the chapeau of 
Article XX.300  
7.322  The European Communities argues that , with respect to verification that the GI is protected in 
its country of origin, verification requires knowledge of local factors that typically only the country of 
origin will have and which may also require on-site  checks.  Submission of a registration certificate 
authenticated by the country of origin would norma lly provide sufficient evidence that the indication 
is protected in the country of origin.  However,  it is not an option for those Members which do not 
have a specific register, such as Australia.  Verifi cation by third country governments is particularly 
necessary where they do not have a specific register  as evaluation of protection in the country of 
origin may be more difficult.  It is not credible  that the Australian government would not be better 
qualified than the right holder or the European Comm unities.  Transmission of applications by third 
country governments is an integral part of the application procedure and should not be viewed in 
isolation.  It has no significant impact on trade in goods.  It makes no difference whether the European 
Communities asks for cooperation from a third country government before or after an application is 
filed.301   
(ii) Main arguments by third parties 
7.323  Argentina , Brazil , India , Mexico and Chinese Taipei inform the Panel that direct 
applications to register GIs located in third countries are possible under their respective national 
legislation.302 
7.324  Brazil argues that the application procedures require WTO Members to "pre-approve" 
applications before they forward them to the Eu ropean Commission, which is a striking violation of 
the national treatment obligation in Article 3.1 of the TRIPS Agreement.303 
7.325  New Zealand considers that, as the same phrase "l ess favourable treatment" is used in 
Article III:4 as in Article 3.1 of the TRIPS Agreemen t, all arguments raised under that claim apply 
equally here.  New Zealand does not consider that the measure can be justified as "necessary" within the meaning of Article XX(d) of GATT 1994.  The Commission conducts its own six-month 
investigation of an application so that it is not n ecessary for applications to be passed through a third 
country government filter.
304   
(iii) Consideration by the Panel 
7.326  This claim concerns procedures for applications for registration under the Regulation.  The 
Panel recalls its findings: 
                                                      
300 European Communities' rebuttal submission, paras. 237-239; responses to Panel question 
Nos. 135(a), (b) and (c) and 136(a). 
301 European Communities' response to Panel question No. 136(b), (c) and (d). 
302 See their respective responses in Annex C at paras. 18, 27, 103, 118 and 180. 
303 Annex C, para. 27. 
304 Annex C, paras. 141-143. WT/DS290/R 
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 (a) at paragraph 7.263, that the Regulation is a law or regulation affecting the internal 
sale and offering for sale of products within the meaning of Article III:4 of GATT 1994;   
(b) at paragraph 7.264 that the Regulation links the protection of the name of a product to 
the territory of a particular country a nd formally discriminat es between imported 
products and products of European Comm unities origin within the meaning of 
Article III:4 of GATT 1994; 
(c) at paragraph 7.265 that the European Communities does not contest that there are, 
among the group of products covered by the Regulation, "like products" among the 
imported products and products of European Communities origin;  
(d) at paragraph 7.266, that under Article III:4 of GATT 1994 we must examine whether 
the measure modifies the conditions of co mpetition between domestic and imported 
products and that in this examination we will focus on the "fundamental thrust and 
effect of the measure itself"; and 
(e) at paragraphs 7.267 to 7.269 on the subs tantive advantage provided under Article 13 
of the Regulation that affects the conditions  of competition of the relevant products; 
(f) at paragraphs 7.303 to 7. 307 concerning the differences between the application 
procedures for GIs that refer to geographical areas located in EC member States and those located in third countries.  These di fferences can result in  some applications 
from third countries, including WTO Members, not being transmitted to the Commission; and 
(g) at paragraph 7.311 that the European Communities has no discretion in the 
implementation of the Regulation to ensure that all applications from third countries 
are transmitted to the Commission.   
7.327  A failure to transmit an application would entail non-registration of GIs, which would lead to 
failure of the products from those third countries to  obtain the benefits of registration set out in 
Article 13 of the Regulation.  Therefore, the Pane l concludes that, with respect to the application 
procedures, insofar as they require examination and transmission of applications by governments, the 
Regulation accords less favourable treatment to imported products th an domestic products, 
inconsistently with Article III:4 of GATT 1994. 
7.328  The European Communities asserts that these pr ocedures are justified by Article XX(d) of 
GATT 1994.  As the party invoking th is affirmative defence, the European Communities bears the 
burden of proof that the conditions of the defence are met. 
7.329  Article XX provides exceptions for certain measu res.  The "measures" which the European 
Communities needs to justify at this point are th e requirements of examination and transmission of 
applications for registration by governments under the Regulation.  These apply to applications from 
both EC member States and third countries.  Howeve r, it does not need to justify the less favourable 
treatment which denies applicants for GIs located in  third countries the opportunity to file direct 
applications.
305 
                                                      
305 This is consistent with the approach of the Appellate Body in US – Gasoline , according to which 
one must examine whether the relevant "measure", rather  than the legal finding of less favourable treatment, 
falls within a paragraph of Article XX:  see DSR 1996:I, 3, at 15.    WT/DS290/R 
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 7.330  Paragraph (d) of Article XX refers to "measu res" falling within the following description: 
"(d) necessary to secure compliance with laws or regulations which are not 
inconsistent with the provisions of th is Agreement, including those relating to 
customs enforcement, the enforcement of monopolies operated under paragraph 4 of Article II and Article XV II, the protection of patents, trade 
marks and copyrights, and the prevention of deceptive practices;" 
7.331  The Panel takes note that paragraph (d) refers to laws or regulations, including those relating 
to "the protection of patents, trade marks and co pyrights, and the preventi on of deceptive practices".  
The Regulation provides for the protection of GIs and is an analogous law or regulation, as the 
European Communities points out.
306  However, the term "laws or regulations" is qualified by the 
phrase "not inconsistent with the pr ovisions of this Agreement".   
7.332  The European Communities argues that the requi rements of examination and transmission of 
applications by governments secure  compliance with the Regulation.307  However, the Panel has found 
that the Regulation itself is inconsistent with th e provisions of GATT 1994 for the reasons set out in 
this report.  Therefore, the Regulation is not a law or regulation within the meaning of paragraph (d).  
In response to questions, the European Comm unities argued that these requirements secure 
compliance with a provision within the Regulation.  Ho wever, if that provision could itself be a law or 
regulation within the meaning of paragraph (d), th e European Communities did not demonstrate that it 
was "not inconsistent" with GATT 1994.308   
7.333  The Panel also notes the use of the term "necessary" in paragraph (d) of Article XX.  We 
recall the clarification of that term  provided by the Appellate Body in Korea – Various Measures on 
Beef, as follows: 
"We believe that, as used in the context of Article XX(d), the reach of the word 
'necessary' is not limited to that which is 'i ndispensable' or 'of absolute necessity' or 
'inevitable'.  Measures which are indispensable  or of absolute necessity or inevitable 
to secure compliance certainly fulfil the requirements of Article XX(d).  But other 
measures, too, may fall within the ambit of this exception.  As used in Article XX(d), 
the term 'necessary' refers, in our view, to a range of degrees of necessity.  At one end of this continuum lies 'necessary' understood as 'indispensable';  at the other end, is 
'necessary' taken to mean as 'making a contri bution to'.  We consider that a 'necessary' 
measure is, in this continuum, located significantly closer to the pole of 'indispensable' than to the opposite pole of simply 'making a contribution to'." 
[footnote omitted]
309   
7.334  The Appellate Body summed up its approach to  the determination of whether a measure 
which is not "indispensable" may nevertheless be "ne cessary" within the meaning of Article XX(d) as 
a process of weighing and balancing a series of factors.  It approved the approach of the GATT Panel in US – Section 337   as a way in which to apply this process as follows:   
                                                     
 
306 European Communities' rebuttal submission, para. 234. 
307 European Communities' first written submission, para. 226;  rebuttal submission, para. 238. 
308 The European Communities argued that verification (and incidentally also the transmission) of 
applications by the government of the country of origin served the purpose of establishing whether the requirements of the Regulation for registration of GIs are satisfied and, accordingl y, secured compliance with 
the requirement in Article 8 that the PDO, PGI and equi valent indications may appear only on products that 
comply with the Regulation.  However, it only expl ained how the Regulation itself was, in its view, not 
inconsistent with GATT 1994:  see its response s to Panel questions No. 135(a), (c) and (d). 
309 Appellate Body report on Korea – Various Measures on Beef , para. 161. WT/DS290/R 
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 "In our view, the weighing and balancing process we have outlined is comprehended 
in the determination of whether a WTO-c onsistent alternative measure which the 
Member concerned could 'reasonably be expect ed to employ' is available, or whether 
a less WTO-inconsistent measure is 'reasonably available'."
310   
7.335  The Panel will follow this approach. 
7.336  Australia argues that the European Communiti es could reasonably be expected to allow 
applicants to file applications directly with its authorities without prior verification by third country 
governments, and that this is WTO-consiste nt.  Many other WTO Members employ such a 
procedure.311  It is not disputed that such a procedure would be WTO-consistent.   
7.337  The European Communities submits that the cooperation of the government of the country 
where the GI is located is indi spensable because the registration of GIs requires the evaluation of 
factual and legal questions which "only the home co untry of the GI is in a position to carry out".312 
7.338  The Panel observes that Articles 6(2) and 1 2b(1) of the Regulation provide that the 
Commission makes the decision on whether the conditions  are satisfied so as to warrant publication.  
It is not clear why an additional examination of th e conditions by other governments is also required.  
Nor is it clear that a third country government is even able to conduct an examination according to the 
requirements, not of its own law, but of an EC Regulation.  The European Communities has not explained why physical proximity or potential knowledge  of certain questions in the country of origin 
implies a capacity to assess matters of EC law.  Ther efore, it is not clear to what extent examination 
by governments, including third country governments, contributes to securing compliance with the conditions for registration. 
7.339  With respect to factual and legal questions that, as  part of the examination, can be verified in 
the country of origin, the European Communitie s does not explain why the Regulation does not 
permit applicants to provide objec tive and impartial evidence that may verify their applications nor 
does it explain why the Commission cannot seek consent to carry out its own verifications.  In its responses to the Panel's questions, the European  Communities indicates that "typically" only the 
country of origin has the required knowledge of lo cal factors and that verification "may" require on-
site checks which the Commission cannot carry out  in third countries without express consent.
313  The 
Panel considers that these responses constitute an admi ssion that, in some cases, verification by third 
country governments is not necessary and that, if it sought and obtained consent, the Commission 
could conduct verifications itself.  The Europ ean Communities has not demonstrated the factual 
premise of its defence that only th e government of the country of origin is in a position to carry out 
the evaluation of these factual and legal questions.  Therefore, the Panel does not need to consider 
further the requirement of examination by governments.   
7.340  With respect to the transmission of applica tions, the European Communities is unable to 
explain why a procedure permitting applicants to f ile applications directly with its competent 
authorities would not permit an examination of wh ether an application for a GI in another WTO 
Member complies with the conditions in the Regulation.  It submitted that transmission of 
applications by governments should not be viewed in isolation.  Given that it has not established that 
                                                      
310 Ibid. para. 166.  The Appellate Body also followed this  approach to the word "necessary" as used in 
paragraph (b) of Article XX in EC – Asbestos , para. 172.   
311 See comments of Argentina, Brazil,  India, Mexico, New Zealand and Chinese Taipei as third parties 
in Annex C, paras. 18, 28, 103, 118, 161 and 180.  
312 European Communities' rebuttal submission, para. 237. 
313 European Communities' response to Panel question No. 136(a).  WT/DS290/R 
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 examination by governments, including third count ry governments, is necessary, it has not established 
that transmission by them is necessary either.  
7.341  Therefore, the Panel considers that the Eur opean Communities has not discharged its burden 
of proving that examination and transmission of  applications by governments are covered by 
paragraph (d) of Article XX.  It is therefore unnecessary to consider the chapeau of Article XX. 
7.342  For these reasons, the Panel concludes that, with respect to the application procedures, insofar 
as they require examination and transmission of a pplications by governments, the Regulation accords 
less favourable treatment to imported products inco nsistently with Article III:4 of GATT 1994, and 
these requirements are not justified by Article XX(d). 
3. Objection procedures 
(a) Description of objection procedures under Articles 7, 12b and 12d of the Regulation 
7.343  The parties agree on most features of the objec tion procedures under the Regulation.  There 
are separate provisions setting out the procedures for obj ections to applications for registration of GIs 
which apply according to the location of the geog raphical area and the location of the person who 
wishes to file an objection.  Article 7 applies wh ere the geographical area and the person who wishes 
to file an objection are both located in EC member  States.  Article 12b applies where the geographical 
area is located in a third country.  Article 12d appli es where the geographical area is located in an EC 
member State and the person who wishes to file an objection is located in a third country. 
7.344  Article 7(1) and 7(3) provide as follows: 
"1. Within six months of the date of publication in the Official Journal of the 
European Communities  referred to in Article 6(2), any Member State may object to 
the registration. 
3. Any legitimately concerned natura l or legal person may object to the 
proposed registration by sending a duly substantiated statement to the competent authority of the Member State in which he resides or is established.  The competent 
authority shall take the necessary measures to consider these comments or objection 
within the deadline laid down." 
7.345  Article 12b(2) provides, relevantly, as follows: 
"2. Within six months of the date of publication as provided for in 
paragraph 1(a), any natural or legal person w ith a legitimate interest may object to the 
application published in accordance with paragraph 1(a) on the following terms: 
(a) where the objection comes from a Member State of the European Union or a 
WTO Member, Article 7(1), (2) and (3) or  Article 12d respectively shall apply; 
(b) where the objection comes from a th ird country meeting the equivalence 
conditions of Article 12(3), a duly substantiated statement of objection shall be 
addressed to the country in which the above mentioned natural or legal person resides 
or is established, which shall forward it to the Commission."   WT/DS290/R 
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 7.346  Article 12d(1) provides, relevantly, as follows: 
"1. Within six months of the date of the notice in the Official Journal of the 
European Union  specified in Article 6(2) relating to a registration application 
submitted by a Member State, any natural or legal person that has a legitimate interest 
and is from a WTO member country or a third country recognised under the 
procedure provided for in Article 12(3) ma y object to the proposed registration by 
sending a duly substantiated statement to the country in which it resides or is established, which shall transmit it, made out or translated into a Community language, to the Commission." 
7.347  Article 7(4) sets out the grounds for admissi on of objections.  Articles 12b(3) and 12d(2) 
provide that the Commission shall examine the admi ssibility of objections in accordance with the 
criteria laid down in Article 7(4). 
(b) National treatment under the TRIPS Agreement 
(i) Main arguments of the parties 
7.348  Australia claims that the Regulation is inconsistent  with Article 3.1 of the TRIPS Agreement 
and Article 2 of the Paris Convention (1967), as incor porated by Article 2.1 of the TRIPS Agreement, 
because the objection procedures accord less fa vourable treatment to non-EC nationals.
314   
7.349  Australia argues that a non-EC national resident or established in a third country has no direct 
means to object to registration but must lodge an objection through the government of the WTO Member in which that person resides or is established.
315  That government is responsible for 
verification and transmission of the objection.  Australia argues that, with respect to objection 
procedures, as with respect to application pro cedures, the legally defined rights and obligations 
between the European Communities and EC member States and EC member State nationals makes the registration process for EC nationals f undamentally different for non-EC nationals.
316  A n y  
outward appearance of symmetry of treatment ther efore masks a fundamentally different situation.317   
7.350  Australia submits that Article 12d of the Regulation limits the persons who may file 
objections to those resident or established in  a country that satisfies the conditions of equivalence and 
reciprocity.318 
7.351  Australia argues that certain individual registra tions, which remain in force, were effected 
under the simplified procedure in Article 17 of the Regulation prior to its deletion in April 2003, 
without granting a right of objection to WTO Member nationals.319  It refers to the Bayerisches Bier 
registration (considered in Section VII:D below) an d argues that there was a mechanism available to 
at least some EC trademark right holders to make their objections known.320 
7.352  Australia also claims that the measure at i ssue is inconsistent with national treatment 
obligations under the TRIPS Agreement because cert ain individual registrations, which remain in 
force, were effected under Article 6 of the Regul ation prior to its amendment by the insertion of 
                                                      
314 Australia's first written submission, para. 203 and second oral statement, para. 77. 
315 Australia's first written submission, para. 203. 
316 Australia's first written submission, para. 205;  first oral statement, para. 34. 
317 Australia's rebuttal submission, paras. 174-176, citing Canada's third party oral statement; and  
Australia's second oral  statement, para. 77. 
318 Australia's first written submission, para. 204. 
319 Australia's first written submission, paras. 190-194. 
320 Australia's comments on EC response to question No. 163.  WT/DS290/R 
 Page 87 
 
 
 Article 12d in April 2003, without granting a ri ght of objection to WTO Member nationals.321 This 
claim is dealt with in Section VII:E of this  report under the heading "individual registrations".322 
7.353  The European Communities  responds that these claims must fail.  The verification and 
transmission of an objection by a third country s hould not be particularly burdensome and does not 
amount to an "extra hurdle" for third country reside nts.  A third country is not required to conduct a 
substantive verification under Article 7(4) the Re gulation – which is clear from the wording of 
Article12d(2) that indicates that the criteria must be assessed in relation to the territory of the 
Community.  Rather, the third country verifies wh ether the person objecting is indeed resident or 
established there.  It could also be useful to have an  official contact point if questions arise concerning 
the territory of the third country, it should be benefici al to the person objecting to deal directly with an 
authority in the third country and, if the objection is admissible, the third country is to be consulted 
before the Commission takes its decision on registration.323  
7.354  The European Communities argues that Article 12d grants a right of objection to persons 
from WTO Members because the phrase "recognised  under the procedure provided for in 
Article 12(3)" only applies to other third countries.  The conditions of equiva lence and reciprocity do 
not apply to WTO Members' right to object.  Otherwise, the specific reference to "WTO Members" 
would be meaningless.  This is also clear in Article 12b(2).324  It also argues that Article 12d does not 
discriminate according to nationality but according to r esidence or establishment.  It cannot simply be 
assumed that the reference to "nationals" in Article  3.1 of the TRIPS Agreement and Article 2 of the 
Paris Convention (1967) also applies to persons who are domiciled or established abroad, regardless 
of their nationality.325 
(ii) Main arguments of third parties 
7.355  Argentina , India , Mexico , New Zealand and Chinese Taipei all inform the Panel that they 
are not aware of any person ever having attempted to  file with their respectiv e authorities an objection 
to registration under the Regulation.326 
7.356  Brazil  considers that the requirement to file objec tions with the country in which the objector 
resides or is established is an "unnecessarily co mplicated or costly" procedure in breach of 
Article 41.2 of the TRIPS Agreement.  Brazil sees no necessity that would justify preventing private 
parties forwarding objections directly to the Eu ropean Commission as many countries, including 
Brazil, allow for direct access for foreigners to object.327 
7.357  Mexico  argues that the Regulation is inconsistent  with national treatment because it imposes 
conditions of reciprocity and preven ts third country nationals filing obj ections directly with European 
authorities.  Non-EC WTO Member nationals have  an additional burden to involve their national 
authorities and delegate to them the objection pro cess.  Mexico refers to cochineal as a practical 
                                                      
321 Australia's first written submission, paras. 184-189. 
322 Australia mentioned Article III:4 of GATT 1994 in response to Panel question No. 92 but has not 
raised a claim under GATT 1994 in relation to the objection procedures.   
323 European Communities' response to Panel question No. 34;  rebuttal submission, paras. 155-159;  
second oral statement, paras. 89-94. 
324 European Communities' first written submission, para s. 73-75;  first oral statement, para. 50;  
second oral statement, paras. 86-88. 
325 European Communities' first written submission, para. 142;  first oral statement, para. 51. 
326 See their respective comments in Annex C in paras. 18, 103, 118, 110 and 179. 
327 Annex C, para. 28. WT/DS290/R 
Page 88  
 
 example of the way in which Mexican producers woul d be required to go through specific procedures 
which EC nationals are not.
328  
7.358  New Zealand argues that the objection procedure can pot entially result in an application for 
registration not proceeding.  Not having the right to obj ect is a loss of a valuable right of a producer to 
protect its intellectual property rights.  Objections  under the Regulation are subject to equivalence and 
reciprocity requirements:  the distinction betw een WTO Members and other third countries in 
Article 12d(1) could have been made clear by inser ting a comma or other words.  Objections must 
also be submitted through governments.  At worst, the benefits of the right to object are entirely 
unavailable to third country producers.  As a result,  the system virtually guarantees that no objections 
will be received from WTO Member nationals to applications for registration of GIs.329   
(iii) Consideration by the Panel 
7.359  These claims concern procedures for filing and exam ination of objections to applications for 
registration of "designations of origin" and "geograp hical indications", as defined in the Regulation.  
They are referred to in this report, for the sake of brevity, as "opposition procedures". 
7.360  These claims relate to two separate issues:  (1) regarding verification and transmission of 
objections by governments;  and (2) regard ing equivalence and re ciprocity conditions.330  The Panel 
will address these issues in turn. 
Verification and transmission  
7.361  These claims are made under the national treatme nt obligations in Article 3.1 of the TRIPS 
Agreement and Article 2 of the Paris Convention ( 1967), as incorporated by Article 2.1 of the TRIPS 
Agreement.  The Panel will first consider the claim under Article 3.1 of the TRIPS Agreement. 
7.362  The Panel recalls that two elements must be sa tisfied to establish an inconsistency with this 
obligation.  (1) the measure at issue must apply with  regard to the protection of intellectual property;  
and (2) the nationals of other Members must be  accorded "less favourable " treatment than the 
Member's own nationals.  The Panel will a ddress each of these elements in turn.  
Protection of intellectual property 
7.363  The Panel recalls that the national treatment ob ligation in Article 3 of the TRIPS Agreement 
applies to the treatment accorded by a Member "with regard to the protection of intellectual property".  
Footnote 3 provides an inclusive definition of the term "protection" as used in Articles 3 and 4: 
"For the purposes of Articles 3 and 4, 'protection' shall include matters affecting the 
availability, acquisition, scope, maintenance and enforcement of intellectual property 
rights as well as those matters affecting the use of intellectual property rights 
specifically addressed in this Agreement." 
                                                      
328 Annex C, para. 110. 
329 Annex C, paras. 139-140. 
330 Australia also makes a claim with respect to the ri ght of objection under the fo rmer Article 17 of the 
Regulation, which has been repealed.  The Panel recalls its decision in paras. 7.14 and 7.17 that it would not make any recommendation with respect to prior versions of the Regulation that are no longer in force but it 
would make findings  with respect to prior versions of the Regulation where they serve some useful purpose in 
reaching conclusions with respect to measures within its terms of refere nce, including individual registrations, 
that are currently in force.  The Panel makes certain findings on the right of objection under the former 
Article 17 for that purpose in para. 7.746.  WT/DS290/R 
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 7.364  The Panel recalls its finding at paragraph 7.299 that procedures for the filing and examination 
of applications for registration are matters affecting the acquisition of intellectual property rights, 
within the scope of "protection" of intellectua l property as clarified in footnote 3 of the TRIPS 
Agreement.  Procedures for objections to such applications are related to the procedures for 
acquisition, as recognized in the fourth paragra ph of Article 62 (which uses the word "opposition") 
and the title of that article.  Hence, opposition pro cedures are also matters "affecting" the acquisition 
of intellectual property rights which concern the "pro tection" of intellectual property, as clarified in 
footnote 3 to the TRIPS Agreement.  It is not dis puted that "designations of origin" and "geographical 
indications", as defined in the Regulation, are a subset of geographical indications, the subject of Section 3 of Part II, and therefore part of a cate gory of intellectual property within the meaning of 
Article 1.2 of the TRIPS Agreement. Therefore, the objection procedures are subject to the national 
treatment obligation in Article 3.1 of that Agreement.  
Less favourable treatment accorded to the nationals of other Members 
7.365  Australia claims that the procedures relating to verification and transmission of objections are 
inconsistent with the national treatment ob ligations under the TRIPS Agreement.   
7.366  The Panel notes that, unlike the application procedures, the objection procedures do not 
concern the location of the geographical area to whic h the GI refers.  Rather, they refer to the place 
where the objector resides or is established.  The Panel recalls its findings at paragraphs 7.221 to 
7.239 and considers, for the same reasons a fortiori , that the treatment accorded by the Regulation to 
persons resident or established in certain countries w ill, objectively, translate into treatment of persons 
with the nationality of those countries.  
7.367  The Panel notes once again that the close link between nationality, on the one hand, and 
residence and establishment, on the other, appear s to be recognized in the Regulation itself.  
Articles 12b(2)(a) and 12d(1) of the Regulation acco rd a right of objection to persons, which the 
European Communities confirms refers to persons  resident or established outside the European 
Communities regardless of their nationality.
331  Yet the April 2003 amending Regulation, which 
inserted these provisions, explained that Article 12d granted the right of objection to the nationals of 
other WTO Members.332   
7.368  The Panel recalls its finding at paragraph 7.184 that under Article 3.1 of the TRIPS 
Agreement we must examine the "e ffective equality of opportunities" with regard to the protection of 
intellectual property rights and at paragraph 7.187 that in this examination we will focus on the 
"fundamental thrust and effect" of the Regulation. 
7.369  The parties and third parties who responded to the Panel's question on this point all reported 
that they were not aware of any objections to registration of GIs under the Regulation ever having 
been filed with the authorities of a third country.333  However, Australia challenges the Regulation, in 
this respect, "as such". 
7.370  Australia claims that the treatment acco rded under the objection procedures in Articles 12b(2) 
and 12d(1) is less favourable treatment than that ac corded under Article 7(3).  There is an apparent 
                                                      
331 European Communities' first written submission, para. 142. 
332 See paragraph 10 of the recitals to the April 2003 amending Regulation, set out in para. 7.121 
above. 
333 However, the United States provided evidence from the US Dairy Export Council and the National 
Milk Producers Federation that US dairy producers and processors had been unable to prevent the registration as 
protected GIs in the European Union of a number of cheese types that they cons idered generic prior to 
registration.  The European Communities responds that this is based on a misperception of the content of the 
Regulation:  see its rebuttal submission, para. 85. WT/DS290/R 
Page 90  
 
 equivalence in the drafting of these provisions but  the question is whether this would imply a 
modification of the effective equality of opportuniti es with regard to the protection of intellectual 
property.   
7.371  The Panel notes that the initial steps in the procedures for objections by private persons can 
be broken down as follows: 
(a) as a first step, all objectors are required to submit their objection to the authorities in 
the country in which they reside or are established.  These will be authorities of an EC member State or a third country, depending on the case;  and 
(b) as a second step, the authorities who receive  an objection verify certain formal 
matters
334 and forward or transmit it to the Commission.   
7.372  We recall the European Communities' expl anation of what amounts to its domestic 
constitutional arrangements, set out at paragraph 7.148, that Community laws are generally not 
executed through authorities at Community level but ra ther through recourse to the authorities of its 
member States which, in such a situation, "act de facto  as organs of the Community, for which the 
Community would be responsible under WTO law and international law in general".335  It follows that 
any objection from a person in an EC memb er State is filed directly with a " de facto  organ of the 
Community".  An objection from a person in a third country cannot be filed directly, but must be filed with a foreign government.  This is  a formal difference in treatment. 
7.373  An EC member State has an obligation under Community law to verify an objection and 
forward it to the Commission.  A group or person who submits an objection in an EC member State 
may enforce these obligations through recourse to j udicial procedures based on the Regulation.  In 
contrast, a third country government has no oblig ation under Community law or any other law to 
receive an objection or to transmit it to the Commi ssion.  A group or person who submits an objection 
in a third country has no ri ght to such treatment.   
7.374  Therefore, persons resident or established in third countries, including other WTO Members, 
who wish to object to applications for registrati on under the Regulation do not have a right in the 
objection procedures that is provide d to persons in the European Communities.  Objectors in third 
countries face an "extra hurdle" in ensuring that the authorities in those countries carry out the functions reserved to them under the Regulation, wh ich objectors in EC member States do not face.  
Consequently, certain objections may not be verified  or transmitted.  Each of these considerations 
significantly reduces the opportunities available to ot her WTO Member nationals in matters affecting 
the acquisition of rights under the Regulation compared with those available to EC nationals.  For this 
reason, the Regulation accords nationals of othe r WTO Members "less favourable treatment" within 
the meaning of Article 3.1 of the TRIPS Agreement.  
7.375  The European Communities submits that the re quirement that statements of objection be 
transmitted by the country where the person is reside nt or established is not an unreasonable condition 
and that, if there is no objective reason for the thir d country government to refuse to cooperate, it is 
not the European Communities' rules which create an "extra hurdle" for third country residents.
336  
The Panel recalls its finding at paragraph 7.309 that  the obligation to accord national treatment with 
respect to a measure of the European Communities is the obligation of the European Communities.  
                                                      
334 The Panel takes note of the European Communities' position that it does not require third country 
governments to verify whether the objections are admissible, but it agrees that it does require them to verify 
certain formal matters:  see European Communities' rebuttal submission, paras. 155-156. 
335 European Communities' second oral statement, para. 148. 
336 European Communities' rebuttal submission, para. 157.   WT/DS290/R 
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 For the reason set out in paragra ph 7.310 in relation to applicatio n procedures, the Panel considers 
that the European Communities has failed  to accord no less favourable treatment itself to the nationals 
of other Members. 
7.376  The Panel confirms that the European Comm unities is entitled, under Article 62.4 of the 
TRIPS Agreement, to provide for procedures for objec tions that comply with the general principles in 
paragraphs 2 and 3 of Article 41.  However, Article 62 is outside the Panel's terms of reference. 
7.377  The Panel recalls its finding at paragraph 7. 248 that the fact that a general exceptions 
provision along the lines of Article XX of GATT 1994 was not included in the TRIPS Agreement has no impact on its analysis of Article 3.1. 
7.378  Therefore, the Panel concludes that, with respect  to the objection procedures, insofar as they 
require the verification and transmission of objecti ons by governments, the Regulation accords less 
favourable treatment to the nationals of other Member s, inconsistently with Article 3.1 of the TRIPS 
Agreement. 
Article 2 of the Paris Convention (1967) 
7.379  In view of the conclusion at paragraph 7.378 w ith respect to the objection procedures, insofar 
as they require the verification and transmission of objections by governments, it is unnecessary to 
consider their consistency with Article 2(1) of the Paris Convention (1967), as incorporated by 
Article 2.1 of the TRIPS Agreement.   
7.380  The Panel recalls its finding at paragraph 7.2 53 and, for the same reasons, concludes that, 
with respect to the opposition procedures, the Re gulation does not impose a requirement of domicile 
or establishment inconsistently with Article 2(2) of the Paris Convention (1967), as incorporated by 
Article 2.1 of the TRIPS Agreement. 
Equivalence and reciprocity conditions 
 
7.381  Australia claims that the right to file an obj ection under Article 12d(1) of the Regulation is 
limited to countries that satisfy the equivalence a nd reciprocity conditions in  Article 12(1) based on a 
reading of the phrase "a WTO member country or a third country recognised under the procedure 
provided for in Article 12(3)" as if it read "a WT O member country recognised under the procedure 
provided for in Article 12(3) or a third country  recognised under the procedure provided for in 
Article 12(3)".  It is necessary for the Panel to make an objective assessment of the meaning of that 
phrase in this provision, although solely for the purpose of determining the European Communities' 
compliance with its WTO obligations.337 
7.382  The Panel observes that this claim is based entir ely on the absence of a comma.  A reading of 
the text of Article 12d(1), set out in full at paragra ph 7.346 shows that if there were a comma after the 
words "a WTO member country", it would be clear  that it was separate from the following words "or 
a third country recognised under the procedure provided for in Article 12(3)".  However, in the Panel's 
view, even without a comma, it is unlikely that the phrase "recognised under the procedure provided for in Article 12(3)" refers to both a "WTO member country" and a "third country" in this context.  If 
that were the correct reading, then there woul d be no need to specify a "WTO member country" 
separately because, outside the European Communi ties, a "WTO member country" is necessarily a 
third country.  There would be no need to refer specifically to a "WTO member country" if it was not distinguished in some way from any other third country.  The difference must be that a third country is only included if it is recognized under the pr ocedure provided for in Article 12(3) so that, 
                                                     
 
337 In this regard, the Panel recalls its comments at para. 7.106 above. WT/DS290/R 
Page 92  
 
 consequently, this phrase would not apply to a "WTO member country".  Indeed, the fact that there is 
no need for a WTO Member to obtain recognition unde r Article 12(3) for its residents to object seems 
to be precisely the reason that it is included.   
7.383  This is consistent with the fact that Article 12b(2), in which the format is clearer, creates a 
right of objection for WTO Member and other th ird country nationals but clearly indicates that 
recognition under the procedure in Article 12(3) do es not apply to WTO Members in this respect.  
Further confirmation is provided by the recita ls to the April 2003 amending Regulation which 
explained the justification for the insertion of the ri ght of objection in Articles 12b and 12d in terms of 
WTO Members, but limited the explanation of the e quivalence and reciprocity conditions to the issue 
of protection provided by registration to foreign names.
338   
7.384  The European Communities confirms that the Pa nel's interpretation of this aspect of the 
Regulation is correct and submits undisputed evidence that since the entry into force of 
Article 12d(1), the publications of all applicati ons for registration of a geographical indication 
specifically refer to the possibility for resident s from WTO countries to object to the application.339   
7.385  Therefore, based on this understanding of Ar ticle 12d(1) of the Regulation, the Panel 
concludes that with respect to the equivalence a nd reciprocity conditions, as allegedly applicable to 
objections, Australia has not made a prima facie case in support of its claims under Article 3.1 of the 
TRIPS Agreement or Article 2(1) of the Paris Conven tion (1967) as incorporated by Article 2.1 of the 
TRIPS Agreement. 
Summary of conclusions regarding objection procedures  
7.386  In summary: 
(a) with respect to the objection procedures, in sofar as they require the verification and 
transmission of objections by governments,  the Regulation accords the nationals of 
other Members less favourable treatment  than the European Communities' own 
nationals inconsistently with Artic le 3.1 of the TRIPS Agreement;  
(b) with respect to the objection procedures, the Regulation does not impose a 
requirement of domicile or establishment incons istently with Article 2(2) of the Paris 
Convention (1967) as incorporated by Ar ticle 2.1 of the TRIPS Agreement; and 
(c) Australia has not made a prima facie case in support of its claims with respect to the 
equivalence and reciprocity conditions, as allegedly applicable to the objection 
procedures. 
4. Regulatory committee  
(a) Description of procedure laid dow n in Article 15 of the Regulation 
7.387  The Regulation provides that certain decisions shall be taken by the European Commission 
"in accordance with the procedure laid down in Article 15".  These include decisions not to proceed 
with registration of a GI under Articles 6(5) and 12b( 1)(b); decisions whether or not to proceed with 
registration of a GI where an objection is admissible under Articles 7(5)(b)340, 12b(3) and 12d(3);  
                                                      
338 Paragraphs 9 and 10 of the recitals to Council Regulation (EC) No. 692/2003 set out at para. 7.121 
above. 
339 European Communities' rebuttal submission, para. 152, attaching as an example the publication of  
the application to register "Lardo di Colonnata" dated 5 June 2003, set out in Exhibit EC-56.  
340 Where no agreement is reached among EC member States.  WT/DS290/R 
 Page 93 
 
 
 decisions to cancel registration of a GI under Artic le 11a;  and decisions whether a third country 
satisfies the equivalence and recipr ocity conditions under Article 12(3).341  The Regulation provides 
that the Commission may ask the committee provided for in Article 15 for its opinion prior to taking 
certain other decisions.  These include decisions to pr oceed with registration of a GI located in a third 
country under Article 12b(1)(a) and decisions to re gister a homonym of an already registered GI 
under Article 6(6).342  
7.388  Article 15 of the Regulation pr ovides, relevantly, as follows: 
"1. The Commission shall be  assisted by a committee. 
2. Where reference is made to this  Article, Articles 5 and 7 of Decision 
1999/468/EC shall apply.   (...)" 
7.389  Decision 1999/468/EC (the so-called "Comitology Decision") lays down the procedures for 
the exercise of implementing powers conferred on the Commission.343  Article 5 of that Decision sets 
out a regulatory procedure which provides that the Commission shall be assisted by a regulatory 
committee composed of the repr esentatives of the EC member States and chaired by the 
representative of the Commission, who does not vot e.  The representative of the Commission shall 
submit to the committee a draft of the measures to be  taken.  The committee shall deliver its opinion 
on the draft within a time-limit by qualified ma jority voting.  The Commission shall adopt the 
measures envisaged if they are in accordance with the opinion of the committee.  If the measures are 
not in accordance with the opinion of the committee, or if no opinion is delivered, the Commission 
shall, without delay, submit to the Council a propo sal relating to the measures to be taken and shall 
inform the European Parliament.  The Council may act  by qualified majority on the proposal within 
three months.  If the Council indicates by qualified majority that it opposes the proposal, the 
Commission shall re-examine it.  If the Council neith er adopts the proposed measure nor indicates its 
opposition within three months, the Commission shall adopt the proposed measure.344   
(b) National treatment under the TRIPS Agreement  
(i) Main arguments of the parties 
7.390  Australia argues that the Regulation is inconsistent with Article 3.1 of the TRIPS Agreement 
and Article 2.1 of the TRIPS Agreement (incorpor ating Article 2 of the Paris Convention (1967)) 
because "a non-EC national trademark right holde r does not have a national representative on the 
Committee to speak for its interests".  It set out  the procedure that is established under Article 15.345   
7.391  The European Communities responds that this claim is manifestly unfounded.  The 
decision-maker is the Commission, or exceptionally  the Council.  The Committee merely assists the 
Commission but does not take decisions itself.  EC member State representatives on the Committee 
                                                      
341 Under the simplified procedure in the former Article 17 of the Regulation, the Commission was 
required to register all names in accordance with the procedure laid  down in Article 15. 
342 The procedure under Article 15 is also applicable in certain other cases, including Articles 1(1), 2(5) 
and 5(5).  
343 It is reproduced in full in Exhibit COMP-8. 
344 Article 15 of the Regulation, set out in Exhib its COMP-1b and EC-1, Artic le 5 of Council Decision 
(EC) No. 1999/468 set out in Exhibit COMP-8 and the European Communities' first written submission, 
paras. 81-82.  The three month time-limit is set by Article 15 of the Regulation. 
345 Australia's first written submission , paras. 58 and 203.  In relation to a claim under Article 41 of the 
TRIPS Agreement, it also referred to  the Committee as the ultimate decisi on-making body for the enforcement 
of trademark rights in the circumstances governed by the Regulation:  see para. 147. WT/DS290/R 
Page 94  
 
 do not speak for particular right holders, but represent the respective EC member State.
346  Australia 
has not provided arguments to substantiate its claim.347   
(ii) Main arguments of third parties 
7.392  China notes the procedure under Article 15 and that the committee is composed only of 
representatives of EC member States.  This procedure for the resolution of possible disputes on 
publication is available to names from WTO Members, but the process does not invite WTO 
Members to participate.348 
(iii) Consideration by the Panel 
7.393  These claims are made under the national treatme nt obligations in Article 3.1 of the TRIPS 
Agreement and Article 2 of the Paris Convention ( 1967), as incorporated by Article 2.1 of the TRIPS 
Agreement.  The Panel can consider these claims together. 
7.394  The parties agree that the regulatory procedur e established under Article 15 of the Regulation 
is as described above.  The procedure under Article  15 has been applied to the consideration of 
particular applications to register GIs located within the European Comm unities where there was an 
admissible objection from an EC member State.  In several cases the Commission's draft measures 
were not in accordance with the op inion of the Committee and therefore had to be submitted to the 
Council of Ministers.  In most of these cases the Council did not act and the Commission then adopted the measures.
349  The Council adopted the measures itself in  the cases of "Bayerisches Bier", "Aceto 
Balsamico tradizionale di Modena" and "Acet o Balsamico tradiziona le di Reggio Emilia".350   
7.395  The Panel notes that this regulatory procedure, wh ich is set out in Article 5 of the Comitology 
Decision, appears to be a standard procedure for the exercise of implementing powers conferred on 
the European Commission under Community law.  Howe ver, in the context of this Regulation, the 
standard regulatory procedure operates in conjunc tion with the application and objection procedures, 
which require the EC member States to examine and transmit applications and objections to the 
Commission.   
7.396  Australia's claims rest on the premise that th e representatives of the EC member States on the 
regulatory committee act as representatives of groups  who submit an application for registration of a 
GI located in their respective territories, of persons  who wish to object who are resident or established 
in their respective territories, and of interests in pr oducts the subject of an application for registration 
of a GI located in their respective territories.   
7.397  The Panel notes that the regulatory committe e must be consulted in cases where the 
Commission proposes to register a GI and there is an admissible objection.  In these cases, the 
representatives of both the EC member State that fo rwarded the application and the EC member State 
that objects participate in the Committee's consider ation of the matter, as well as in any action taken 
by the Council of Ministers.  However, accord ing to Article 5(5), the EC member State which 
transmitted the application has already decided that  the application satisfies the requirements of the 
Regulation and, according to Article 7, the EC memb er State that objects has already taken the view 
that there are grounds to do so. 
                                                      
346 European Communities' first written submission, para. 154. 
347 European Communities' second oral statement, para. 100. 
348 See Annex C, para. 83. 
349 This included the first registration of "Feta" which was later annulled. 
350 This information was provided by the European Communities in a table of applications for 
registration on which the Committee established by Article 15 was consulted.  See Exhibit EC-28.  WT/DS290/R 
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 7.398  The Panel notes that the Regulation refers to both persons and EC member States, as well as 
third countries.  With respect to applicants, Article  5 of the Regulation refers to an applicant group but 
an EC member State checks and forwards the application and, thereafter, the Commission 
communicates with the "Member State concerned".  With respect to objections, Article 7(1) grants only the EC member States the right to raise objectio ns to registration before the Commission, whilst  
Article 7(3) provides that any legitimately con cerned natural or legal person may object to the 
proposed registration by sending its statement to th e EC member State in which he resides or is 
established.  Where an objection is  acknowledged to be admissible with in the meaning of Article 7(4), 
Article 7(5) provides that the Commission is to ask  the "Member States concerned" to seek agreement 
among themselves:  it makes no provision for any intervention by individuals.
351 Articles 6(1), 9 and 
11 also refer to the "Member State(s) concerned" in the procedures under the Regulation.352   
7.399  The Panel recalls that it has already accepted the European Communities' explanation that 
Community laws are generally not executed thro ugh authorities at Community level but rather 
through recourse to the authorities of its member  States which, in such a situation, "act de facto  as 
organs of the Community, for which the Community would be responsible under WTO law and 
international law in general".353  We note its explanation that:  
"When fulfilling their functions under Regulation 2081/92, a Member State is in no 
way identified with the applicant or the pe rson raising the objection. In verifying the 
applications or statements of objection, the Member State must correctly, impartially and objectively apply the terms of the Regula tion. Similarly, when exercising its role 
in the Committee, the Member States must be guided by the terms of the Regulation, 
and not act as a representative of any in dividual applicant or objecting person."
354 
7.400  The Panel does not consider that these features of the Regulation "as such" compel any 
different treatment of different GIs.  Under the national treatment obligations of the TRIPS 
Agreement, evidence is required that, in the appli cation of these procedures, the authorities cannot, do 
not or will not apply the Regulation in the same way to the nationals of other Members and the 
European Communities' own nationals.  Austra lia has not provided any such evidence.   
7.401  Further, Australia's references to procedural fa irness, due process and/or transparency in the 
regulatory committee's decision-making process do not appear to relate to the national treatment 
obligations, but rather other provisions of the TRIPS Agreement. 
7.402  Accordingly, the Panel concludes that Australia has not made a prima facie  case in support of 
its claims with respect to th e regulatory committee under Article 3.1 of the TRIPS Agreement and 
Article 2(1) of the Paris Convention (1967), as inco rporated by Article 2.1 of the TRIPS Agreement. 
(c) National treatment under GATT 1994 
(i) Main arguments of the parties 
7.403  Australia argues that the Regulation is inconsistent  with Article III:4 of GATT 1994 because 
the outcome of applications for registration are determined through a process, that is, the Committee 
of EC member State representatives, "in which there is no representative or advocate for the 
                                                      
351 Confirmed by the Court of First Instance of  the European Communities in Case T-215/00, SCEA La 
Conqueste v Commission [2001] ECR II-181, para. 45, reproduced in Exhibit COMP-12. 
352 Article 11 establishes a process for cancellation due to non-compliance with specifications among 
"Member States concerned".  Article 11a also distinguish es between requests for cancellation by persons and the 
State which submitted the original application. 
353 European Communities' second oral statement, para. 148. 
354 European Communities' response to Panel question No. 39. WT/DS290/R 
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 registration of a GI for an imported product and no requirement for procedural fairness, due process 
and/or transparency concerning that Committee's decision-making process".
355 
7.404  The European Communities responds that Australia's claim to have a representative on the 
Committee is not reasonable.  The public authorities of a WTO Member must be presumed to administer their duties properly and fairly.  This is  independent of the nationality of the civil servants 
and employees working for such authorities.  There are no "EC representatives" in the public 
authorities and agencies of Australia.
356 
(ii) Consideration by the Panel 
7.405  The Panel notes that this claim, like those cl aims in respect of the regulatory committee 
brought under the TRIPS Agreement, rests on the prem ise that the representati ves of the EC member 
States on the regulatory committee act as representativ es of groups who submit an application for 
registration of a GI located in their respective te rritories, of persons who wish to object who are 
resident or established in their respective territories,  and of interests in products the subject of an 
application for registration of a GI located in their respective territories.   
7.406  The Panel recalls its finding at pa ragraph 7.400 that the relevant features of the Regulation "as 
such" do not compel any different treatment of diffe rent GIs. Under the national treatment obligation 
in Article III:4 of GATT 1994, evid ence is required that, in the application of these procedures, the 
authorities cannot, do not or will not apply the Regul ation in the same way to imported products and 
EC products and that this accords less favourable treatment.  Australia has not provided any such 
evidence.  Accordingly, the Panel concludes that Australia has not made a prima facie case in support 
of its claim with respect to the regulator y committee under Article III:4 of GATT 1994.  
5. Labelling requirement 
(a) Factual aspects of the labelling requirement  in Article 12(2) of the Regulation 
(i) Text of Article 12(2) of the Regulation 
7.407  This claim concerns a labelling requirement in  the second indent of Article 12(2) of the 
Regulation.  The parties disagree sharply on the me aning and scope of this provision, read in its 
context.  Therefore, the Panel will begin by quoting Article 12(2) in full before turning to the factual 
arguments of the parties. 
"2. If a protected name of a third country is identical to a Community protected 
name, registration shall be granted with due  regard for local and traditional usage and 
the practical risks of confusion. 
Use of such names shall be authorized only if the country of origin of the product is 
clearly and visibly indicated on the label." 
                                                      
355 Australia's first written submission, para. 177. 
356 European Communities' first written submission, para. 155.  WT/DS290/R 
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 (ii) Main arguments of the parties 
7.408  Australia claims that this labelling requirement ap plies to the use of GIs from other WTO 
Members so that use of a GI on a product from anot her WTO Member can be authorized only if it 
meets this labelling requirement.357   
7.409  Australia does not consider that Article 12(2) of the Regulation can apply to the registration 
of both EC and third country GIs in view of its act ual text which expressly relates to a situation where 
the later registered GI is "a protected name of a th ird country".  As long as it is drafted in that form, 
the European Communities is not bound to apply the interpretation that it has offered, and the 
European Court of Justice would enforce the specific terms of the Regulation.358  Australia also argues 
that the European Communities' explanation of the country of origin labelling requirement in 
Article 12(2) is not supported by the actual text of Ar ticle 12(2), particularly when read together with 
Article 6(6), which applies to the registration of a GI located in the European Communities.359   
7.410  Australia submits that the meaning of "such nam es" is unclear but understands that it refers to 
a third country GI protected in that third country and which is identical to a prior GI on the EC 
register.  It submits that the meaning of "protect ed name of a third country" is ambiguous but, given 
the context, it assumes that it refers to a third country GI protected in that third country.360  Later, it 
argues that the term "Community protected name" re fers to a GI already on the register whether from 
the European Communities or a third country.361 
7.411  Australia argues that "clearly and visibly indi cated" means that the label must be noticeably 
evident in the same field of vision as the GI and the GI symbol.362 
7.412  The European Communities responds that the second subparagraph of Article 12(2) only 
applies to the GIs in the situation referred to in its first subparagraph.  It only applies in cases of 
homonyms and not to third country names in general.363  It confirms that there have been no cases in 
which this provision has been applied in practice.364 
7.413  The European Communities argues that "such na mes" in the second subparagraph refers to 
both "a protected name of a third country" and a "Community protected name", so that the 
requirement to indicate the country of origin can apply to both the third country name and the 
Community name.  In practice, this would mean that whichever indication is registered later would normally be required to indicate the country of origin.
365  In both these terms, "protected" means, in 
principle, "protected under Regulation 2081/92" but "the provision also applies where protection is 
sought for a protected name from a third country".  "Community protected name" covers only protected names of geographical areas located in the EC.
366  Article 12(2) covers both a situation 
where a third country GI is a homonym of an EC GI already on the register, as well as an EC GI 
which is a homonym of a third country GI already on the register.367  "Such names" is written in the 
                                                      
357 Australia's first written submission, paras. 220 and 223. 
358 Australia's first oral statement, para. 25;  response to Panel question No. 53. 
359 Australia's first written submission, para . 34;  first oral statement, para. 26. 
360 Australia's first written submission, paras. 235-236. 
361 Australia's rebuttal submission, para. 65. 
362 Australia's response to Panel question No. 120. 
363 European Communities' first written submission, paras. 445-446 and 475-476.  
364 European Communities' response to Panel question No. 44. 
365 European Communities' first written submission,  para. 88 and 134-135; rebuttal submission, 
para. 145. 
366 European Communities' response to Panel question No. 41. 
367 European Communities' response to Panel question No. 43. WT/DS290/R 
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 plural which clearly indicates that the requirement can relate to both the EC and third country GIs.
368  
Nothing in the wording of the provision prevents it applying to GIs from both third countries and the EC.
369  Even if "Community protected name" referre d to EC and third country names already on the 
register, "protected name of a third country" shoul d be interpreted to include names protected in a 
third country, whether or not from the European Communities or a third country.370  In the EC's view, 
Article 12(2) has no specific link with Article 12(1).371 
7.414  The European Communities argues that, in cases of homonymous GIs from the European 
Communities, the last indent of Article 6(6) also requires a clear distinction in practice between them 
which would normally, in practice, require the indication of the country of origin.372  The only reason 
why the last indent of Article 6(6) does not explicitl y require the indication of the country of origin is 
that this provision deals with a wide r set of conflicts than Article 12(2).373  There is no difference 
between the word "homonymous" in Article 6(6) and "identical" in Article 12(2) as the English 
definitions of those words are synonymous and the Fr ench and Spanish versions use the same term in 
both provisions.374  Article 6(6) deals with a wider set of  conflicts than Article 12(2), such as 
homonyms from within the European Communities, homonyms from within the same third country or 
different third countries.375  Article 6(6) simply refers to "p rotected names" from the European 
Communities and a third country, without specifying which of these is the one the subject of an 
application and which is already on the register.376 
7.415  The European Communities argues that "clearly an d visibly indicated" must be evaluated in 
each specific case from the point of view of what a normally attentive consumer can easily notice and 
not be induced in error as to the origin of the product.377 
(iii) Consideration by the Panel 
7.416  The Panel begins by noting that the second indent  of Article 12(2) of the Regulation expressly 
sets out a requirement that concerns what is indicated on "the label" of a product.  Therefore, for the sake of brevity, the Panel refers to it as "the labelling requirement".
378  The labelling requirement has 
not been applied in practice.  However, Australia challenges this aspect of the Regulation "as such". 
7.417  The meaning of the various terms in the second indent of Article 12(2) is essential to a 
resolution of this claim.  Therefore, it is necessar y for the Panel to make an objective assessment of 
the meaning of this provision, although solely for the purpose of determining the European Communities' compliance with its WTO obligations.
379 
7.418  The parties disagree on the scope of the labe lling requirement.  Australia does not exclude 
that it may apply to all GIs from third countries, like the wider context in Article 12, which applies to 
all GIs from third countries that satisfy the conditio ns in paragraph 1 and are recognized as equivalent 
                                                      
368 European Communities' rebuttal submission, para. 147. 
369 European Communities' second oral statement, para. 81. 
370 European Communities' second oral statement, para. 82. 
371 European Communities' response to Panel question No. 117. 
372 European Communities' first written submission, para. 89;  response to Panel question No. 118. 
373 European Communities' first written submission, para. 479.   
374 European Communities' response to Panel question No. 119. 
375 European Communities' response to Panel question No. 42. 
376 European Communities' rebuttal submission, para. 146. 
377 European Communities' response to Panel question No. 120. 
378 The use of this term does not prejudge whether this is a "labelling requirement" as used in 
Annex 1.1 of the TBT Agreement.  That issue is considered at paras. 7.448-7.449. 
379 In this regard, the Panel recalls  its comments at para. 7.106.  WT/DS290/R 
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 under paragraph 3.  The European Communities r esponds that it applies only to identical or 
homonymous GIs, consistent with the immediat e context in paragraph 2 of Article 12.  
7.419  The Panel observes that the scope of the labelli ng requirement is indicated by its subject:  
"[u]se of such names".  "Such" is a demonstrativ e adjective that refers to something previously 
specified, which expressly requires an examination of  the context.  The context indicates that "such 
names" refers to the subject of the previous indent , which is eligible GIs from third countries that are 
identical to a Community protected name.  This is confirmed by the content of the two indents:  the 
first refers to practical risks of confusion, and the second imposes a requirement that a detail be 
clearly and visibly indicated, which appears to be a specific requirement that addresses the more 
general consideration in the first.  Whilst it is possi ble to look back further in the context and read the 
phrase "[u]se of such names" as referring to the na mes or GIs in the preceding paragraph 1, such a 
reading is, in our view, constrained.  We note th at the position of paragraph 2 near the beginning of 
Articles 12 through 12d might suggest that it is a mo re general provision, but its position can perhaps 
be explained by the fact that it is one of the tw o original provisions on GIs from third countries that 
predate the insertion of Articles 12(3) and 12a through 12d.  The European Communities has 
confirmed that "such names" refers to the previous  indent, which covers only identical GIs.  On the 
basis of the text of the provision, whic h has not been applied, the Panel agrees. 
7.420  Even though Australia understands that the provision only refers to "identical" GIs380, the 
parties disagree on the meaning of "such names".  Australia assumes from the context that it refers to the subject of the previous indent, which is "a protect ed name of a third country" that is identical to a 
Community protected name.  The European Commun ities responds that it refers not only to "a 
protected name of a third country" which is identic al, but also to the "Community protected name" 
with which it is identical. 
7.421  The Panel considers, once again, that, "such na mes" refers to the subject of the previous 
indent, which is eligible GIs from third countries th at are identical to a Community protected name.  
Although the term "a Community protected name" also appears in the previous indent, its registration 
is not in issue.  It appears that the first indent  relates only to the registration of GIs from a third 
country.  The second indent attaches a condition to that  registration which, logically, only applies to 
the use of GIs from a third country.   
7.422  This reading is confirmed by the wider cont ext in Articles 12 through 12b which relates only 
to the registration of GIs from third countries.  Th e registration of GIs located within the European 
Communities is dealt with in Articles 5 through 7.  A provision permitting objections to such 
registrations from persons in third countries was inser ted in Article 12d in April 2003.  It would be a 
very special reading if the second indent of Article  12(2) were the sole provision in the scheme of 
Articles 12 through 12b that attached  a condition to registration of GIs located within the European 
Communities, which is unlikely, given that context.  The Panel takes note that the term "such names" 
is in the plural, unlike "a protected name of a th ird country" which is in the singular.  However, the 
qualifier "such names" is linked to "t he product" which is in the singular, so that the plural form is not 
determinative of the issue before us.   
7.423  Therefore, the Panel concludes that Article 12(2), including the labelling requirement in the 
second indent, refers only to the registration and use of a GI from a third country that is identical to a "Community protected name."  It appears that this refers to a GI that is already registered under the 
                                                     
 
380 The Panel notes that, whilst the English version of the Regulation uses the word "identical" in 
Article 12(2), two other official versions of the Regulation use words corresponding to the English word 
"homonymous":  these are homonyme  in the French version and homónima in the Spanish version.  The Panel 
assumes that the meaning of the different versions of the text can be reconciled, and uses the word "identical" in 
relation to Article 12(2) in the English version of this report in such a sense.  See further para. 7.467 below.  WT/DS290/R 
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 Regulation, as no party has suggested a reason w hy it would matter for this requirement where the 
prior GI was located, as long as it was identical. 
7.424  The Panel also notes that the first indent of Artic le 12(2) contains language almost identical to 
that found in Article 6(6) of the Regulation.  Both refer to registration of na mes "with due regard for 
local and traditional usage and the actual risk [or practi cal risks] of confusion".  However, Article 6(6) 
applies to an application to register a GI located within the European Communities which "concerns a 
homonym of an already registered name from the European Union or a third country recognised in accordance with the procedure in Article 12(3)".  Unlike the second indent of Article 12(2), the last 
tiret of Article 6(6) sets out the following requirement: 
"[T]he use of a registered homonymous name  shall be subject to there being a clear 
distinction in practice between the homonym registered subsequently and the name 
already on the register, having regard to th e need to treat the producers concerned in 
an equitable manner and not to mislead consumers." 
7.425  The Panel will revert to the parallel in the cons truction of the requirements in Articles 12(2) 
and 6(6) in its consideration of this claim. 
(b) National treatment under the TBT Agreement 
(i) Main arguments of the parties 
7.426  Australia claims that the Regulation is inconsistent  with Article 2.1 of the TBT Agreement 
because the labelling requirement in Article 12(2)  accords less favourable treatment to imported 
products.
381  Firstly, it argues that the labelling requireme nt in Article 12(2) of the Regulation falls 
within the definition of a "technical regulati on" in Annex 1.1 of the TBT Agreement.   
7.427  Australia argues that the Regulation applies to an "identifiable group of products" within the 
meaning of Annex 1.1 of the TBT Agreement becau se Article 12(2) applies to agricultural products 
and foodstuffs for which GI protection is sought where the GI is identical to a GI already on the EC 
register.  These are not expressly identified in  the Regulation but th ey are identifiable.382  Although it 
applies to GIs, these exist with re gard to specific agricultural produc ts or foodstuffs for which the 
homonymous GIs have been registered.383 
7.428  Australia argues that the Regulation lays dow n "product characteristics or their related 
processes" within the meaning of the definition in Annex 1.1 of the TB T Agreement, in that it sets out 
a specific labelling requirement.  It provides that  the use of GIs from other WTO Members will only 
be authorized "if the country of origin of the produc t is clearly and visibly indicated on the label."  To 
that extent, the Regulation is a document which "inc lude[s ] ... labelling requirements as they apply to 
a product" within the meaning of a technical regulation as defined in Annex 1.1 of the TBT 
Agreement.  If this requirement was not considered to relate to a product, it would render the concept 
of a label meaningless.  The words "as they ap ply to" refer to a product, as opposed to the 
characteristics of a product.  In any case, the origin of a product is inextricably linked to that product 
by virtue of the definitions of a "designation of or igin" and "geographical indication" in Article 2(2) 
                                                      
381 Australia's first written submission, para. 241. 
382 Australia's first written submission, paras. 209-213;  rebuttal submission, para. 192. 
383 Australia's rebuttal submission, para. 191.  WT/DS290/R 
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 of the Regulation and inherently involves a product.  Australia does not argue that "origin" is product 
characteristic, but that the labelling requi rement itself is a product characteristic.384 
7.429   Australia argues that the labelling requireme nt is "mandatory" within the meaning of 
Annex 1.1 of the TBT Agreement because Article 12( 2) uses the term "shall".  Australia does not 
dispute that it is not a precondition for the marke ting of a product in the European Communities.  
However, it is mandatory for trading an imported product in the European Communities with a GI in 
the same competitive conditions as those afford ed to a domestic product in the European 
Communities with a GI.  An imported product does not benefit from the protection against 
unauthorized use provided by registration, nor from the reputation of superior  quality engendered by 
registration.385 
7.430  Australia submits that the labelling require ment concerns both imported and domestic 
products that are "like" within the meaning of Article  2.1 of the TBT Agreement.  It is sufficient for 
the Panel to consider the issues in the contex t of a general presumption of likeness.  GIs are 
intellectual property rights and do not affect the analysis of likeness of the underlying products.  
Products bearing a GI from an area that straddles the external border of the European Communities 
could be exactly the same although some would be  imported.  Further, GI protection under the 
Regulation concerns unfair competition between pr oducts which normally involves a high degree of 
similarity or likeness.  Jurisprudence on Article III:4 of GATT 1994 can be looked to for clarification of the national treatment obligation in  Article 2.1 of the TBT Agreement.
 386 
7.431  Australia claims that Article 12(2) provides di fferent treatment to imported products because 
Article 6(6) does not mandate that corresponding do mestic products bear a country of origin label.387  
It alleges that this is less favourable treatment b ecause "there are likely to be situations" where the 
labelling requirement modifies the conditions of co mpetition to the detriment of imported products.388  
Specifically, it creates costs of additional labelling or re-labelling.  It does not allege that it accords 
any other less favourable treatment.  It accepts that in some cases existing labels may, coincidentally, 
satisfy the labelling requirement.  However, where a different, or additional, label is required to be 
produced and attached to a product, this will create ex tra expense that can be expected to modify the 
conditions of competition to the detrimen t of producers of the imported product.389  The appropriate 
standard for determining less favourable treatment is  that whether the measure modifies the conditions 
of competition in the relevant market to the detriment of imported products.390  The European 
Communities bears the burden of proving that Ar ticle XX of GATT 1994 has any significance in the 
context of the TBT Agreement but it has not presented any supporting arguments.391 
7.432  Australia accepts that, if the European Commun ities were to interpret Article 12(2) of the 
Regulation according to whichever GI was registered la ter, that this could be expected to overcome its 
inconsistency with Article 2.1 of the TBT Agreement.392  However, in the situation covered by 
Article 12(2) which is the subject of its claim,  Article 6(6) of the Regulation has no relevance.393  It 
                                                      
384 Australia's first written submission, paras. 219-220;  response to Panel question No. 122 and 
comment on EC response to that question. 
385 Australia's first written submission, para. 22 3;  rebuttal submission, paras. 195-196. 
386 Australia's first written submission, paras. 226, 230-233; rebuttal submission, para. 207. 
387 Australia's first written submission, para . 237;  rebuttal submission, para. 209. 
388 Australia's first written submission, para. 239. 
389 Australia's responses to Panel questions Nos. 52, 120 and 121. 
390 Australia's response to Panel question No. 125. 
391 Australia's comment on EC response to Panel question No. 125. 
392 Australia's response to Panel question No. 53. 
393 Australia's response to Panel question No. 118. WT/DS290/R 
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 refers to Article 6(6) only in  relation to the factual issue of the proper interpretation of 
Article 12(2).
394 
7.433  Australia argues that a measure implementing ma tters concerning intellectual property rights 
is not necessarily excluded from the scope of the TBT Agreement.395  The assessment of whether a 
measure is a technical regulation within the meani ng of the TBT Agreement is a threshold issue for 
the application of that agreement but is not dete rminative of a violation.  WTO obligations are 
generally cumulative.396 
7.434  Australia argues that the labelling requireme nt mandates a means of distinguishing an 
imported product, rather than functioning as a mark of origin per se .  Even if it is a mark of origin, 
Article 12(2) is the means by which the Regula tion compulsorily differentiates between GIs on 
imported and domestic products.  Ar ticle IX:1 of GATT 1994 is silent on the issue of national 
treatment and marks of origin.  However, even if excludes the application of Article III of GATT 
1994, it does not exclude the application of Article 2.1 of the TBT Agreement if the measure is a 
"technical regulation".  Further, even if Article 2.1 did conflict with Article IX, Article 2.1 would 
prevail in accordance with the General Interpreta tive Note to Annex 1A to the WTO Agreement.397 
7.435  The European Communities responds that Article 12(2) of th e Regulation is not a technical 
regulation within the meaning of Annex 1.1 of the TBT Agreement.398  It is not a labelling 
requirement but merely sets out the conditions unde r which a GI will be registered in a situation 
where there are homonyms from the Eur opean Communities and a third country.399   
7.436  The European Communities argues that Article 12(2) does not apply to identifiable products 
within the meaning of Annex 1.1 because the Regul ation itself does not allow one to identify the 
products which might be affected by the requirement to indicate the country of origin.400 
7.437  The European Communities argues that Ar ticle 12(2) does not lay down product 
characteristics within the meaning of Annex 1. 1 because it does not contain a specific labelling 
requirement for any specific product.  It is not Article 12(2) itself which imposes a labelling 
requirement but rather, according to Article 4(2)(h ), the product specification for an individual GI, 
which contains the specific labelling details.  Furthe r, it does not relate to a product, process or its 
production method but merely to a product's geogra phic origin which is different from the product 
itself.  Origin may confer specific characteristic s or a reputation on a product which may entitle it for 
protection as a GI but those issues are already covered by TRIPS and do not need to be addressed by the TBT Agreement.  Origin marking is al ready covered by Article IX of GATT 1994.
401  In addition, 
the phrase "labelling requirements as they apply to a product" appears to refer to the application of 
labelling requirements to characteristics of a product, process or production method.402  
                                                      
394 Australia's response to Panel question No. 121. 
395 Australia's first oral statement, para. 41. 
396 Australia's rebuttal submission, para. 203. 
397 Australia's rebuttal submission, paras. 212-213;  responses to Panel question Nos. 123-124. 
398 European Communities' first written submission, paras. 439 and 457. 
399 European Communities' first written submission, para. 449; response to Panel question No. 50. 
400 European Communities' first written submission, para. 447. 
401 European Communities' first written submission,  paras. 448-452; responses to Panel question 
Nos. 50 and 122. 
402 European Communities' response to Panel question No. 122.  WT/DS290/R 
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 7.438  The European Communities argues that Article 12( 2) is not mandatory within the meaning of 
Annex 1.1 because the possibility to apply for GI protection is a right, not an obligation.  GI 
registration is voluntary and not a pr econdition for the marketing of products.403 
7.439  The European Communities argues that Australia has failed to establish that products bearing 
homonymous GIs from the European Communities covered by Article 6(6) and a product from a third 
country covered by Article 12(2) would be "like".  Th e comparable situation under Article 6(6) is that 
of two homonymous GIs from the European Comm unities, not one from the European Communities 
and one from a third country.  It is therefore unnecess ary to resolve the meaning of "like products" in 
Article 2.1 of the TBT Agreement.404 
7.440  The European Communities argues that Artic le 12(2) does not accord less favourable 
treatment because it applies in a non-discriminat ory fashion to European Communities and third 
country GIs.  The requirement applies to hom onyms from the European Communities and a third 
country and will be a condition for the registration of  the GI for which protection is sought later.  
Article 6(6) does not explicitly require the indicatio n of a country of origin because it deals with a 
wider set of conflicts, in particular, homonyms from the same EC member State, where the country of 
origin would not make a "clear distinction" in prac tice".  It could also deal with other conflicts not 
resolved by Article 12(2) such as homonyms from the same third country, or different third countries.
405  An indication of the country of origin of the later registered GI avoids practical risks of 
confusion because, typically, the prior registered GI  will have been marketed  longer under that GI and 
be known by consumers.  It also takes into account th e fact that the prior registration cannot easily be 
amended.406  Imported products would not necessarily have to be re-labelled as the country of origin 
may already be clearly and visibly indicated on the labe l.  Existing marks of origin may be sufficient.  
The affixation of an additional label clearly and visi bly indicating the country of origin would also be 
sufficient.407  The legitimate regulatory objectives of th e Member concerned must be taken into 
account in the application of both Article 2.1 and 2.2 of the TBT Agreement.  Alternatively, the Panel 
would have to consider whether Article XX of GA TT 1994 is applicable within the context of the 
TBT Agreement.408 
7.441  The European Communities argues that the requi rement under Article 12(2) is a mark of 
origin covered by Article IX of  GATT 1994, which excludes national tr eatment obligations.  It is not 
possible to distinguish marks of origin which fall under the TBT Agreement and those which do not.  
There is no textual basis for distinguishing gene ral origin marking requirements and those which 
cover only specific products.  If Article 12(2) was cons idered a technical regulation, Article 2.1 of the 
TBT Agreement could not apply to origin marki ng requirements lest it render Article IX:1 useless.409  
The European Communities does not argue that there is  a conflict, but rather that Article IX:1 and 
Article 2.1 should be interpreted in a harmoni ous way that gives meaning to both of them.410  Finally, 
Article 1.2 of the Agreement on Rules of Origin deals inter alia  with Article IX on marks of origin 
but makes no mention of the TBT Agreement, which would be hard to explain if the TBT Agreement 
applied to marks of origin.411 
                                                      
403 European Communities' first written submission, paras. 453-456. 
404 European Communities' response to Panel question No. 51. 
405 European Communities' first written submission, paras. 477-479;  response to Panel question 
No. 42. 
406 European Communities' response to Panel question No. 54. 
407 European Communities' response to Panel question No. 120. 
408 European Communities' response to Panel question No. 125. 
409 European Communities' first written submission, para. 481;  first oral statement, para. 72;  responses 
to Panel questions Nos. 123 and 124. 
410 European Communities' second oral statement, para. 245. 
411 European Communities' response to Panel question No. 122. WT/DS290/R 
Page 104  
 
 (ii) Main arguments of third parties 
7.442  New Zealand supports the arguments of Australia in  its first written submission that the 
Regulation is inconsistent with Article 2.1 of the TBT Agreement.
412 
(iii) Consideration by the Panel 
7.443  This claim concerns Article 12(2) of the Regulation "as such".413  Article 2.1 provides as 
follows: 
"2.1 Members shall ensure that in r espect of technical regulations, products 
imported from the territory of any Member shall be accorded treatment no less favourable than that accorded to like products  of national origin and to like products 
originating in any other country." 
7.444  The Panel considers that the essential elements of  an inconsistency with Article 2.1 of the 
TBT Agreement are, as a minimum, that the measure at issue is a "technical regulation";  that the 
imported and domestic products at issue are "like pro ducts" within the meaning of that provision;  and 
that the imported products are accorded "less favourable" treatment than that accorded to like 
domestic products.  We will cons ider these elements below. 
Technical regulation
 
7.445  The threshold issue for the Panel to decide is whether the requirement in Article 12(2) of the 
Regulation is a "technical regulation" within the me aning of the TBT Agreement.  If it is not, then 
Article 2.1 of the TBT Agreement will not be appli cable.  Annex 1.1 of that agreement provides as 
follows: 
"For the purpose of this Agreement, however, the following definitions shall apply: 1. Technical regulation  
Document which lays down product charact eristics or their related processes and 
production methods, including the applicable  administrative provisions, with which 
compliance is mandatory.  It may also include  or deal exclusively with terminology, 
symbols, packaging, marking or labelling requirements as they apply to a product, 
process or production method."  [Explanatory note omitted] 
7.446  The parties refer to the two elements that appear in the text of this definition, namely that a 
technical regulation is a "[d]ocument which lays  down product characteristics or their related 
processes and production methods, including the a pplicable administrative provisions" and "with 
which compliance is mandatory", as well as to the issue that a technical regulation must be applicable to an identifiable product or group of pr oducts, explained by th e Appellate Body in EC – Asbestos and 
EC – Sardines .
414  The Panel will address these in turn.  
7.447  The parties disagree as to whether the second indent of Article 12(2) itself lays down a 
labelling detail.  In the Panel's view, it clearly does.   The text of the second indent of Article 12(2) 
                                                      
412 Annex C, para. 124. 
413 In this sub-section will refer to it as the "second indent of Article 12(2)" as the words "labelling 
requirement" appear in the text of Annex 1.1 of the TBT Agreement.   
414 Australia's first written submission, para. 210, and the European Communities' first written 
submission, paras. 441-442, both cite the Appellate Body report on EC – Sardines , para. 176, which referred to 
the Appellate Body report on EC – Asbestos, paras. 66-70.  WT/DS290/R 
 Page 105 
 
 
 expressly sets out the condition that the country of origin must be clearly and visibly indicated on the 
label.  Even though the product specifications under Article 4.2(h) lay down the labelling details for 
products relating to each individual GI as it is register ed, this does not alter the terms of Article 12(2).   
7.448  The parties disagree as to whether the second indent of Article 12(2) of the Regulation lays 
down a product characteristic .  The Panel notes that it expressly sets out a requirement that concerns 
what must be indicated on "the label" of  a product.  That is a labelling requirement.415  The second 
sentence of the definition of "technical regulati on" in Annex 1.1 of the TBT Agreement expressly 
refers to "labelling requirements" as an example of a technical regulation.   
7.449  The Panel notes that this example in the defin ition in Annex 1.1 is qualified by the words "as 
they apply to a product, process or production me thod".  The text does not limit the scope of the 
example by stating what the labels must indicate in order for them to constitute a technical regulation.  
Rather, they explain to what the labelling requirements "apply".  This simply means that a requirement concerning a product label is a labelli ng requirement that applies to a product.  The 
context shows that the subject of the second sentence, "[i]t" refers back to the noun "[d]ocument" as 
qualified by the relative clause beginning "which lays down" and ending with the word "mandatory".  
Were this not so, the element that "compliance is  mandatory", for example, would not apply to the 
items described in the second sentence, which woul d be contrary to the object and purpose of the 
obligations concerning technical regulations.  As a re sult, a document that "deal [s] exclusively with ... 
labelling requirements as they apply to a product" can  be an example of a "[d]ocument that lays down 
product characteristics".  The issue is not whethe r the content of the label refers to a product 
characteristic:  the label on a product is a product characteristic.  Therefore, the second indent of 
Article 12(2) of the Regulation deals exclusively with a labelling requirement "as it applies to a 
product". 
7.450  In any event, the second indent of Article 12(2) requires that the country of origin be clearly 
and visibly indicated on the label of a product in or der to provide a means of identification where two 
GIs are identical.  In the Panel's view, the purpose of this requirement is indicated by the first indent 
of Article 12(2), namely, that it is a means to avoid th e practical risks of confusi on.  In other words, it 
is a means of identification.  In this respect, the Panel agrees with the view of the Appellate Body in 
EC – Asbestos and  EC – Sardines that a means of identification is, itself, a product characteristic.
416 
7.451  In summary, a document that lays down a requi rement that a product label must contain a 
particular detail, in fact, lays down a product charact eristic.  This interpretati on is consistent with a 
Decision of the TBT Committee in which Members agreed as follows: 
"In conformity with Article 2.9 of the Ag reement, Members are obliged to notify all 
mandatory labelling requirements that are not based substantially on a relevant 
international standard and that may have a significant effect on the trade of other 
Members.  That obligation is not depende nt upon the kind of information which is 
provided on the label, whether it is in the nature of a technical specification or not."417   
7.452  Therefore, the Panel considers that the second i ndent of Article 12(2) is a "[d]ocument which 
lays down product characteristics or their relate d processes and production methods, including the 
applicable administrative provisions" and a labelling re quirement that applies to a product, within the 
meaning of the definition of "technical regulation".   
                                                      
415 It is not contested that it ca nnot be a labelling requirement beca use it only lays down one product 
characteristic.   
416 Appellate Body reports on EC – Asbestos, para. 67, and EC – Sardines , para. 191. 
417 "Decisions and Recommendations adopted by the Committee since 1 January 1995", document 
G/TBT/1/Rev. 8 of 23 May 2003. WT/DS290/R 
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 7.453  The Panel will now consider whether compliance is mandatory  with the second indent of 
Article 12(2) of the Regulation.  The ordinary mean ing of the word "mandatory" can be defined in the 
case of an action as "obligatory in consequen ce of a command, compulsory.  (Foll. by upon )".
418  The 
second indent uses the word "shall", which indicates that it is mandatory for products subject to 
Article 12(2) to obtain the benefits of  registration under the Regulation.   
7.454  As to the European Communities' argument that this is not a mandatory requirement in order 
to market the relevant products in the European Communities, the Panel notes the approach taken to a 
similar argument made by the European Communities in a previous dispute.  The panel in that dispute 
recalled that a document may require positively that a product contain certain characteristics or it may 
require negatively that the product not possess certain characteristics.  That panel reasoned that, by 
requiring the use of a particular type of product und er a particular trade description, the measure at 
issue in effect lay down product characteristics in a negative form, that is, by excluding other products 
from being marketed under that description.419 
7.455  In the present dispute, the Panel notes that only products that comply with a product 
specification in a GI registration may use the indicati ons PDO, PGI or equivale nt national indications.  
Further, agricultural products and foodstuffs b earing an unregistered identical GI may not be 
marketed in the European Comm unities under that name where they infringe prior registered GIs 
which, given that the GI is identical, appear s inevitable unless the products are not comparable. 
7.456  The second indent of Article 12(2) makes a di stinction between those products using a GI 
identical to a Community protected name that sa tisfy the labelling requireme nt, and those which do 
not.  The negative implication that follows from this requirement is that products with a GI identical 
to a Community protected name that do not satisfy this labelling requirement must not use the 
indications PDO, PGI or equivalent national indicati ons and, to the extent that they fall within the 
protection granted to a prior identical Community protected name, must not be marketed in the 
European Communities using that GI.  Therefore, the second indent of Article 12(2) is an obligatory or mandatory requirement.   
7.457  The Panel agrees with the view of the Appella te Body that compliance would be impossible 
with a technical regulation if it were not applicable to identifiable products.
420  The parties disagree as 
to whether the second indent of Article 12(2) applies to an identifiable product.  It refers to "the 
product" but does not name any product.  However, Article 12(2) forms part of the Regulation which 
has a defined product coverage described in Article  1(1) as those agricultural products intended for 
human consumption referred to in Annex I to the EC  Treaty, the foodstuffs listed in Annex I to the 
Regulation and the agricultural products listed in Annex II to the Regulation, subject to certain 
exceptions for wine-sector products, except wine vinega rs or spirit drinks.  A procedure is specified 
for the amendment of the product coverage in Annexes I and II to the Regulation.  That is a large, but 
defined, group of products.  Article  12(2) is applicable to them all, although it lays down a specific 
requirement that is only triggered where a name is  identical to a Community protected name.  The 
identical criterion permits identification of the pro ducts to which this requirement will apply in a 
given case.  To date, there have not been any. 
                                                      
418 The New Shorter Oxford English Dictionary (1993).  
419 Panel report on EC – Sardines, paras. 7.43-7.45, citing the Appellate Body report on EC – Asbestos, 
para. 69. 
420 "A 'technical regulation' must, of course, be applicable to an  identifiable  product, or group of 
products.  Otherwise, enforcement of the regulation will,  in practical terms, be impossible": Appellate Body  
report in EC – Asbestos, para. 70, cited in EC – Sardines , para. 185.  WT/DS290/R 
 Page 107 
 
 
 7.458  Therefore, the Panel considers that compliance is mandatory with the second indent of 
Article 12(2) of the Regulation, within the meani ng of the definition of "technical regulation", and 
that this requirement applies to identifiable products. 
7.459  Accordingly, the Panel's preliminary finding is  that the labelling requirement is a "technical 
regulation" within the meaning of the definition in  the TBT Agreement and that Article 2.1 of that 
agreement may be applicable. 
7.460  The European Communities argues that this la belling requirement cannot be subject to the 
national treatment obligation in Article 2.1 of the TBT Agreement due to the terms of Article IX of 
GATT 1994 on marks of origin.   
7.461  The Panel considers it unnecessary to reach a defi nitive view on this issue, in view of its 
findings below on "less favourable treatment".  It su ffices for the purposes of this dispute to note that 
the definition of a "technical regulation" in A nnex 1.1 and the preamble to the TBT Agreement 
specifically include "marking and la belling requirements" without any indication that marks of origin 
are excluded.421  Article 1.4 and 1.5 specifically exclude  certain purchasing specifications addressed 
in the Agreement on Government Procurement and san itary and phytosanitary measures as defined in 
the SPS Agreement, but there is no express exclusion for marks of origin.422 In any event, it has not 
been shown that Article 12(2) of the Regulation is , in fact, a requirement to display a mark of 
origin.423   
7.462  The Panel also recalls the views of the Appellate Body in EC – Asbestos and EC – Sardines  
that, when examining whether a measure is a technica l regulation, "the proper legal character of the 
measure at issue cannot be determined unl ess the measure is examined as a whole".424  The second 
indent of Article 12(2) is a small part of the Regulation which applies in a narrow circumstance.  
Clearly, the Regulation is an intellectual property m easure but the parties do not ask the Panel to take 
a position on whether the product specifications require d under Article 4(2) are technical regulations 
and the inspection structures required under Article  10 are conformity assessment procedures within 
the meaning of the TBT Agreement.425  The characterization of the whole measure is therefore a 
                                                      
421 Many Members, including the parties to this disput e, have notified marks and labels of origin to the 
TBT Committee.  See, for example, G/TBT/Notif.9 5.155, G/TBT/Notif.95.106, G/TBT/Notif.95.438, 
G/TBT/Notif.96.42, G/TBT/Notif.96.269, G/TBT/Notif.96.364, G/TBT/Notif.96.450, G/TBT/Notif.97.112, 
G/TBT/Notif.97.113, G/TBT/Notif.98.206, G/TBT/Notif.98.448, G/TBT/Notif.99.548, G/TBT/Notif.99.668, 
G/TBT/Notif.00.65, G/TBT/ Notif.00.94, G/TBT/Notif.00.289, G/ TBT/Notif.00.483, G/TBT/N/ARG/7, 
G/TBT/N/ARG/9, G/TB T/N/JPN/7, G/TBT/N/JPN/12, G/ TBT/N/PER/A, G/TBT/N/CHL/33, 
G/TBT/N/THA/92, G/TB T/N/THA/94, G/TBT/N/USA/25, G/ TBT/N/JPN/78, G/TBT/N/GBR/7, 
G/TBT/N/JPN/123, G/TB T/N/JPN/124, G/TBT/N/KOR /76, G/TBT/N/ISR/36  and G/TBT/N/ISR/42.  Further, 
there was a general understanding among signatories of the Tokyo Round TBT Agreement, recorded in the 1994 
Annual Report of the Committee established under that agreement, that mandatory marking requirements applied in the context of marking the origin of products were covered by the provisions of that agreement, but 
one signatory (not a party to the current dispute) could not join a consensus on that issue:  see GATT document 
L/7558 of 30 November 1994 in BISD 41S/718 at 719.  The Tokyo Round TBT agreement, like the current TBT Agreement, referred to "marking and labelling requirements". 
422 This implies no view as to whether Article IX of GATT 1994, which includes an MFN treatment 
obligation but no national treatment obligation, impliedly excludes marks of origin from the scope of the obligation in Article III:4 of GATT 1994.  That is an issue which need not, and do not, decide. 
423 See, for example, the GATT CONTRACTING PARTIES Recommendation of 21 November 1958 
on marks of origin, para. 5, "Countries should accept as a satisfactory marking the indi cation of the name of the 
country of origin in the English language introduced by  the words 'made in'": BISD 7S/30.  That example shows 
that a mark of origin can be different  from the labelling requirement at issue.  
424 Appellate Body reports in EC – Asbestos, para. 64, and EC – Sardines, paras. 192-193. 
425 See the parties' respective responses to Panel question No. 60 and the European Communities' 
response to Panel question No. 134. WT/DS290/R 
Page 108  
 
 complex issue on which there has been little argume nt and which the Panel considers unnecessary to 
decide for the purposes of this claim.  
Like products
 
7.463  Article 2.1 of the TBT Agreement refers to "products imported from the territory of any 
Member" and inter alia  "like products of national origin".  An essential element of a claim under 
Article 2.1 is the existence of like products.  Austra lia submits that it is sufficient for the Panel to 
consider the issues in the context of "a genera l presumption of likeness".  The European Communities 
contests the likeness of products within the meaning of Article 2.1 of the TBT Agreement.  The Panel 
considers it unnecessary to reach any view on this i ssue, in view of the findings below on "less 
favourable treatment".   
Less favourable treatment  
7.464  Article 2.1 of the TBT Agreement refers to "treatment no less favourable".  An essential 
element of a claim under Article 2.1 is that, in resp ect of technical regulations, the treatment accorded 
to imported products is "less favourable" than that accorded to like products of national origin.  The 
Panel notes the similarity in the terms used in Ar ticle 2.1 of the TBT Agreement and Article III:4 of 
GATT 1994, which also refers to "treatment no less favourable".  The preamble to the TBT 
Agreement expressly sets out the desire "to further the objectives of GATT 1994".  However, in view 
of its findings below, the Panel considers it suffi cient for the purposes of this dispute simply to 
observe that the starting point for this analysis must be whether the measure at issue accords any 
difference in treatment.   
7.465  Australia claims that the treatment accorded unde r the labelling requirement for GIs located in 
third countries, including WTO Members, is less favour able than that accorded to GIs located within 
the European Communities.   
7.466  The Panel has found at paragraph 7.423 that the labelling requirement only applies to 
products bearing GIs from third countries that are iden tical to a Community protected name.  This is a 
narrow circumstance.   
7.467  The Panel notes that Articles 12(2) and 6(6) share almost identical language that indicates that 
the purpose of each provision is to minimize actual, or practical, risks of confusion between the use of two registered identical or homonymous GIs.  An obvious difference in the English version is that 
Article 12(2) uses the word "identical"  and Article  6(6) uses the word "homonymous".  However, two 
other official versions of the Regulation use the same word in both provisions ( homonyme  in French 
and homónima  in Spanish).  The Panel assumes that the mean ing of the different ve rsions of the text 
can be reconciled, and that, therefore, the words in  Articles 12(2) and 6(6) can have the same meaning 
in English as well.  
7.468  Both requirements are mandatory, providing that us e "shall" be authorized only if a particular 
condition is met or "shall" be subject to a particular  condition.  However, there is a formal difference 
in that Article 12(2) states the condition expressly by  providing that "the country of origin of the 
product is clearly and visibly indicated on the label".  In contrast, Article 6(6) states the condition in 
terms of factors that "a clear distinction in prac tice between the homonym registered subsequently and 
the name already on the register, having regard to the need to treat the producers concerned in an 
equitable manner and not to mislead consumers".  
7.469  The Panel does not consider that the mere fact that imported pr oducts and products of 
European Communities' origin are subject to differe nt legal provisions is in itself conclusive in 
establishing an inconsistency with the national tr eatment obligation in Article 2.1 of the TBT  WT/DS290/R 
 Page 109 
 
 
 Agreement.  Nor is it conclusive that the indicatio n of the "country of origin" is both mandatory and 
express in the Regulation for imported products only,  since the Regulation does not mandate that the 
European Communities must not impose the same labelling requirement on domestic products. 
7.470  The European Communities explains that the diffe rence in wording of the relevant provisions 
is due to the fact that Article 6(6) applies to a wider class of GIs.  For example, it could apply to 
identical GIs located in different EC member St ates, as well as to a GI within the European 
Communities identical to a GI located in a third country, which Article 12(2) does not.   
7.471  The essential point is that nothing in the text  appears to prevent th e European Communities 
implementing the two requirements in the same manner where an application is made to register a GI, 
whether located within the European Communities or in a third country, that is identical to a prior 
registered GI.  It appears that the wording of Ar ticle 6(6) of the Regulation permits the European 
Communities to apply the same condition found in the text of Article 12(2) so that both requirements 
would be applied to the GI registered later in time , irrespective of the origin of the product or the 
location of the GI.  The European Communities has conf irmed to the Panel that the clear distinction in 
practice would normally require the indication of the country of origin.426   
7.472  Australia accepts that, if the European Commun ities were to interpret Article 12(2) of the 
Regulation according to whichever GI was register ed later in time, this could be expected to 
overcome its inconsistency with Ar ticle 2.1 of the TBT Agreement.427  Although it later argued that 
Article 6(6) was of no relevance, the Panel do es not agree for the reasons set out above.   
7.473  Australia has not provided any evidence that th e formal difference in the wording of the two 
requirements leads to any difference in treatment  nor that it accords any different treatment to 
imported products.  It has not provided evidence that, where the European Commission applies the 
same condition under the labelling requirement in Article  12(2) and the last tiret of Article 6(6), that 
such a practice would not survive a legal challenge  before the European Court of Justice.   
7.474  The Panel recalls the European Communities' submission that, according to the settled case 
law of the European Court of Justice, "Community legislation must, so far as possible, be interpreted 
in a manner that is consiste nt with international law".428  
7.475  Therefore, for the above reasons, in par ticular, the confirmation by the European 
Communities that the clear distinction in practi ce under Article 6(6) would normally require the 
indication of the country of origin, the Panel concl udes that Australia has not made a prima facie case 
in support of this claim.  
7.476  Accordingly, it is unnecessary for the Panel to c onsider whether an assessment of conformity 
with Article 2.1 of the TBT Agreement requires reference to be had to the regulatory objective 
pursued by a measure as referred to in Article 2.2 of  the TBT agreement, or th e absence in the text of 
the TBT Agreement of a general exceptions pr ovision such as Article XX of GATT 1994.   
                                                      
426 European Communities' first written submission, para. 479;  response to Panel question No. 118. 
427 Australia's response to Panel question No. 53. 
428 See supra  at 172.  WT/DS290/R 
Page 110  
 
 C. T
RADE -RESTRICTIVENESS CLAIM  
1. Inspection structures 
(a) Description of inspection structures (Articles 4.2(g), 10 and 12a of the Regulation) 
7.477  The condition in Article 12(1) of the Regulati on that a "third country ... has inspection 
arrangements ... equivalent to those laid down in this Regulation" w as considered earlier as one of the 
equivalence and reciprocity conditions.  That is a per-country condition.  The condition at issue here 
concerns the inspection structures required by Artic le 10 of the Regulation under the procedures for 
registration of individual GIs.  This is , allegedly, a per-product requirement.   
7.478  The Panel continues its examination in respect of these particular requirements, bearing in 
mind the aim of the dispute settlement mechanism,  which is to secure a positive solution to a 
dispute429, and the views of the Appellate Body in Australia – Salmon on the principle of judicial 
economy.430  Were the Panel not to examine the claim with respect to the inspection structures 
requirements within the application procedures, its  conclusion on the inspection structures condition 
in Article 12(1) would not enable the DSB to make  sufficiently precise recommendations and rulings 
so as to allow for prompt compliance in order to ensure effective resolution of this dispute.   
7.479  An application for registration of a GI must be accompanied by certain documents.  The first 
is the product specification.  Article 5(3) provides as fo llows with respect to an application to register 
a GI located within th e European Communities: 
"3. The application for registration shall include the product specification 
referred to in Article 4." 
7.480  Article 12a(1) of the Regulation provides as follows  with respect to applications to register 
GIs located in third countries:  
"1. Applications must be accompanied by the specification referred to in 
Article 4 for each name." 
7.481  With respect to the specification,  Article 4 provides as follows:  
"1. To be eligible to use a protected designation of origin (PDO) or a protected 
geographical indication (PGI) an agricultura l product or foodstuff must comply with a 
specification. 
2. The product specification shall include at least: (...) (g) details of the inspection structures provided for in Article 10;" 
7.482  A specification refers to a particular product and the list of items that Article 4 requires to be 
included in a product specification all appear to be product-specific.   
7.483  Applications to register GIs located in th ird countries must also be accompanied by a 
declaration by a third country government.  Article  12a(2)(b) of the Regulation provides for a third 
country to transmit to the Commission an application to register a GI located in its territory accompanied by: 
                                                     
 
429 Article 3.7 of the DSU. 
430 Appellate Body report on Australia – Salmon, para. 223.  WT/DS290/R 
 Page 111 
 
 
 "(b) a declaration that the structures provided for in Article 10 are established on 
its territory." 
7.484  This declaration is not required of an EC me mber State when it transmits to the Commission 
an application to register a GI located within the European Communities.  However, EC member 
States have an obligation under Article 10 itself to en sure that inspection structures are in place.  The 
European Communities confirms that the requirement s are the same for EC member States and third 
countries.431 
7.485  Article 10(1) explains that the function of insp ection structures is "to ensure that agricultural 
products and foodstuffs bearing a protected name  meet the requirements laid down in the 
specifications".  Article 10(2) provides that an "inspection structure" may comprise one or more 
"designated inspection authorities and/or private bodi es approved for that purpose" by the EC member 
State.  Article 10(3) lays down requirements regard ing the characteristics and duties of the inspection 
authorities and/or private bodies but not the product-specific requirements which appear in product specifications.  We highlight the requirements for inspection authorities under Article 10(3) which are 
relevant to the claims below. 
7.486  The characteristics of the inspection authoriti es and/or private bodies include the following: 
"Designated inspection authorities and/or approved private bodies must offer 
adequate guarantees of objectivity and impar tiality with regard to all producers or 
processors subject to their control and have permanently at their disposal the qualified 
staff and resources necessary to carry out inspection of agricultural products and 
foodstuffs bearing a protected name." 
7.487  The inspection authorities and/or private bodies may outsource certain functions as follows: 
"If an inspection structure uses the services of  another body for some inspections, that 
body must offer the same guarantees.  In  that event, the designated inspection 
authorities and/or approved private bodies sh all, however, continue to be responsible 
vis-à-vis the Member State for all inspections." 
7.488  The applicable standards for priv ate bodies are described as follows: 
"As from 1 January 1998, in order to be approved by the Member States for the 
purpose of this Regulation, private bodies must fulfil the requirements laid down in standard EN 45011 of 26 June 1989. 
The standard or the applicable version of standard EN 45011, whose requirements 
private bodies must fulfil for approval purpo ses, shall be established or amended in 
accordance with the procedure laid down in Article 15. 
The equivalent standard or the applicable version of the equivalent standard in the 
case of third countries recognised pursuant to Article 12(3), whose requirements private bodies must fulfil for approval purpo ses, shall be established or amended in 
accordance with the procedure laid down in Article 15." 
7.489  Standard EN 45011 sets out "General require ments for bodies operating product certification 
systems".  It specifies general requirements that a third party operating a product certification system 
shall meet if it is to be recognized as competent and reliable.  These include requirements relating to 
                                                     
 
431 European Communities' response to Panel question No. 126(a). WT/DS290/R 
Page 112  
 
 the certification body itself and its personnel; chang es in the certification requirements; applications 
for, evaluation of, and decisions on, certification; surveillance;  use of licences, certificates and marks 
of conformity; and complaints to suppliers.  It applies for EC member States although the European 
Communities has not yet established the standard or the applicable version of that standard on the 
basis of Article 10(3) of the Regulation.  
7.490  Standard EN 45011 is a European standard that  takes over the text of ISO/IEC Guide 65:1996 
prepared by the ISO Committee on Conformity A ssessment (CASCO).  The European Communities 
has not established an equivalent standard in the case of third countries, but the European 
Communities informs the Panel that ISO/IEC Guide 65:1996 is an example of such an equivalent 
international standard.
432 
7.491  The responsibilities of governments are set out in Article 10(1) and (2).433  Governments must 
ensure that inspection structures are in place by designating a public inspection authority and/or approving a private inspection body and then notify them to the Commission.  Where the government 
designates a public inspection authority, it carries out inspections itself.  Where the government 
approves a private inspection body, it must ascertain th at the private body is capable of fulfilling its 
functions in accordance with Article 10(1) and meet s the requirements of Article 10(3), set out above.  
The basic criterion for the approval process is that  the private body can effectively ensure that 
products comply with a specification.  After designation and/or approval, the government is responsible for continued monitoring that an  approved private body continues to meet the 
requirements.
434 
(b) Trade-restrictiveness under the TBT Agreement 
(i) Main arguments of the parties 
7.492  Australia claims that the inspection structures required by Articles 4, 10 and 12(1) of the 
Regulation are inconsistent with Article 2.2 of the TBT Agreement.  Article 10 requires that EC 
member States have in place these inspection structures.  Article 12a(2)(b) requires that other WTO Members provide a declaration that the structures provided for in Article 10 are established in its 
territory.
435   
7.493  Australia argues that the Regulation is a "tec hnical regulation" within the definition in 
Annex 1.1 of the TBT Agreement because Articles 10 and 4 (in particular Article 4.2(g)) together 
require inspection structures to check that products using a GI comply with the product specifications 
in the GI registration.  Article 4.2(b) and (e) provide that product specifications include "product 
characteristics".  The process of checking compliance with the specifications is a regular sequence of 
actions, i.e. a process, and falls within the mean ing of "product characteristics or their related 
processes".436   
7.494  Australia does not take a position on whether th e definitions of "technical regulation" and 
"standard" and the definition of a "conformity ass essment procedure" in Annex 1 are necessarily 
mutually exclusive, but agrees that a conformity  assessment procedure requires at the very least a 
                                                      
432 The European Communities supplied copies of EN 45011 and ISO/IEC Guide 65:1996 to the Panel 
in Exhibits EC-2 and EC-3, respectiv ely.  See European Communities' response to Panel question No. 126(c). 
433 Article 10(1) and (2) refers to EC member States  but, in conjunction with Article 12a(2)(a), they 
also apply to the governments of third countries. 
434 Uncontested information provided by the European Communities in its responses to Panel question 
Nos. 127 and 132.   
435 Australia's first written submission, para. 249. 
436 Australia's first written submission, paras. 221- 222, 224;  rebuttal submission, paras. 201-202;  
response to Panel question No. 133 and comment on EC response to Panel question No. 134.  WT/DS290/R 
 Page 113 
 
 
 separate technical regulation or standard against which products are to be assessed.437  Australia 
submits that it is irrelevant to this claim whethe r or not the Regulation is an intellectual property 
measure and also subject to another WTO covered agreement.438 
7.495  Australia argues that the inspection structure requirements are mandatory for products that 
use a registered GI.  Therefore, they are manda tory for trading an imported product in the same 
competitive conditions as those afforded to a domes tic product that uses a registered GI.  Australia 
does not dispute that inspection structures, and GI registration, are not a precondition for the marketing of a product in the EC.
439   
7.496  Australia does not contest that the Regulation could pursue legitimate objectives or that it is 
capable of generally fulfilling those legitimate objectives.440  It argues that the Regulation is more 
trade restrictive than necessary to fulfil its le gitimate objective, taking account of the risks non-
fulfilment would create, contrary to Article 2.2 of  the TBT Agreement.  Its claim is based on the 
allegation that the Regulation imposes an "absolute requirement" for an EC model inspection structure 
as a condition for the registration of a GI, irrespectiv e of the circumstances in the Member in which 
the GI is located or of the circumstanc es of the trade in the relevant products.441   
7.497  Australia argues that the Regulation mandates the type of structure or design for inspection 
that other WTO Members must have in place.  Su ch a requirement cannot be necessary to fulfil the 
Regulation's legitimate objective unless the Europe an Communities had determined that no other 
systems in any WTO Member would in any circum stances provide the same degree of assurance as its 
own system.442  Inspection structures in a WTO Member where the good is produced is meaningless 
where the unauthorized use involving goods from a third country WTO Member occurs in the 
European Communities.443   
7.498  Australia does not contest that inspection struct ures may be required with respect to a specific 
product for which protection is sought or that so me type of compliance verification mechanism may 
be necessary in most cases. Nor does it consider  that government involvement is necessarily 
problematic.444  It challenges the fact that the Regul ation dictates specific design features:  
Article 10(3) provides that an inspection structure must have permanently have at its disposal the 
necessary qualified staff, yet temporary staff may be all that is necessary to provide the required level 
of assurance445;  Article 10 does not allow for the possibility that inspection structures might be 
unnecessary446;  Article 12a(2)(b) requires a declaration as to the structures provided for in Article 10, 
which excludes alternative measures that are not inspec tion structures at all, such as systems of laws.  
However, Australia does not challenge these specific elements, rather it challenges the fact that the 
Article 10-type inspection structure is imposed on other WTO Members regardless of their existing 
inspection structures or other systems that would perform the same function.447   
7.499  Australia argues that alternative measures can achieve the EC's legitimate objectives with the 
same degree of effectiveness, such as laws ag ainst misleading and deceptive commercial practices 
enforced by an investigating authority, which ma y operate in conjunction with food labelling laws 
                                                      
437 Australia's response to Panel question No. 60. 
438 Australia's rebuttal submission, para. 203. 
439 Australia's first written submission, paras. 221-222, 224;  rebuttal submission, paras. 195-197. 
440 Australia's first written submission, paras. 247-248. 
441 Australia's response to Panel question No. 58. 
442 Australia's first written submission, paras. 249-254. 
443 Australia's first written submission, para. 256. 
444 Australia's rebuttal submission, para. 219;  response to Panel question No. 128. 
445 Australia's rebuttal submission, para. 217 
446 Australia's first written submission, para . 255; rebuttal submission, para. 217. 
447 Australia's second oral statement, paras. 94-95. WT/DS290/R 
Page 114  
 
 enforced by a food authority.  These authorities c ould ensure that products comply with their 
specifications and address any risks created by non- fulfilment.  Further alternative measures include 
the tort of passing off, industry certifications, self-regulation by producers and consumer protection 
mechanisms.
448 
7.500  The European Communities  responds that none of these provisions are a " technical 
regulation " within the meaning of the TBT Agreemen t.  Article 4 does not lay down product 
characteristics for specific products.  These charact eristics are contained in the application for 
registration.  Article 4 simply sets out the re quirements with which a product specification must 
comply in order to permit GI registration.  The pr oduct characteristics are contained in an individual 
GI application.449  Inspection structures are not "related pr ocesses" within the defi nition of a technical 
regulation in Annex 1.1 of th e TBT Agreement because they are not related to the product 
characteristics and, if they were, then all c onformity assessment procedures would be technical 
regulations which would lead to a systematic ove rlap between the various provisions of the TBT 
Agreement.450 
7.501  The European Communities submits that the pur pose of Article 4.2(g) in conjunction with 
Article 10 is to ensure conformity with th e product specification, not to lay down product 
characteristics.  The TBT Agreement makes a clea r distinction between technical regulations and 
standards in Articles 2 to 4 and procedures to assess conformity with them in Articles 5 to 9.  The 
dividing line between them is perfectly clear in the definitions in Annex 1.  This claim does not fall 
within Article 2 but appears to fall with in Articles 5 to 9 of the TBT Agreement.451  The inspection 
structure requirements are not a technical regulation.   They cannot be both a technical regulation and a 
conformity assessment procedure .452  It does not contest that a conformity assessment procedure 
assesses conformity with a technical regulation or a standard as defined in Annex 1.3 of the TBT 
Agreement but does not consider it necessary for the Pa nel to decide whether the inspection structures 
are indeed conformity assessment procedures.  It does not contend that the general requirement that a GI must correspond to certain product specificati ons constitutes a technical regulation since it is 
merely a condition for the grant of an intellectua l property right.  A different question would be 
whether individual product specifications for individual  GIs would be technical regulations but that is 
an issue which the Panel does not need to address.
453 
7.502  The European Communities argues that Articles 4 and 10 are not mandatory because GI 
protection is voluntary.  It is not a precondition for placing products on the market.454 
7.503  The European Communities argues that the existence of inspection structures is not more 
trade-restrictive than necessary because it is only required with r espect to the specific product for 
which protection is sought;  it does not determine the specific design of the inspection structures;  and 
they are necessary to achie ve the legitimate objectives of the Re gulation.  Unfair competition laws 
might be adequate to implement GI protection under Article 22.2 of the TRIPS Agreement but 
Article 1.1 allows Members to implement more extensive protection.  This discretion under 
Article 1.1 cannot be limited on the basi s of Article 2.2 of the TBT Agreement.455  The European 
                                                      
448 Australia's first written submission, paras. 258-260 ;  response to Panel question No. 62;  rebuttal 
submission , para. 219. 
449 European Communities' first written submission, paras. 464-465. 
450 European Communities' second oral statement paras. 246-247. 
451 European Communities' first written submission, paras. 460-463. 
452 European Communities' rebuttal submission, para. 406; response to Panel question No. 133. 
453 European Communities' second written submission, paras. 407-408. 
454 European Communities' first written submission, para. 467. 
455 European Communities' first written submission, paras. 484-501.  WT/DS290/R 
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 Communities refers to its arguments on this point in relation to the claim under national treatment 
obligations of the TRIPS Agreement.456   
7.504  The European Communities refers to the c onformity assessment procedures foreseen in 
Article 6 of the TBT Agreement.  Nothing in that agreement obliges Members simply to accept 
conformity assessment carried out by bodies of a nother Member.  While Article 6.1 of the TBT 
Agreement stipulates that Members ensure, whenev er possible, that they accept the results of 
conformity assessment procedures in other Members,  this only applies when certain conditions are 
fulfilled.  Article 6.3 encourages Members to ente r into negotiations for the mutual recognition of 
conformity assessment procedures.  Article 6.4 encourages Members to permit participation of 
conformity assessment bodies located in the terr itories of other Members in their conformity 
assessment procedures but it is not a legal obligation to permit such participation.  Australia has 
concluded a mutual recognition agreement which permits bodies designated by those countries to 
carry out conformity assessment with respect to EC standards and vice versa.457  Australia has failed 
to explain why government involvement in d esignation of inspection bodies is problematic.458 
(ii) Main arguments of third parties 
7.505  New Zealand supports the arguments of Australia in  its first written submission that the 
Regulation is inconsistent with Article 2.2 of the TBT Agreement.459 
(iii) Consideration by the Panel 
7.506  This claim is made under Article 2.2 of th e TBT Agreement, which provides as follows: 
"2.2 Members shall ensure that technical regulations are not prepared, adopted or 
applied with a view to or with the effect of creating unnecessary obstacles to 
international trade.  For this purpose, tec hnical regulations shall not be more trade-
restrictive than necessary to fulfil a legitimate objective, taking account of the risks non-fulfilment would create.  Su ch legitimate objectives are, inter alia:   national 
security requirements;  the prevention of deceptive practices;  protection of human 
health or safety, animal or plant life or h ealth, or the environment.  In assessing such 
risks, relevant elements of consideration are, inter alia:   available scientific and 
technical information, related proces sing technology or intended end-uses of 
products." 
7.507  The threshold issue for the Panel to decide is  whether the inspection structures requirements 
under Article 10 of the Regulation, read together wi th the product specifications of Article 4 of the 
Regulation, are a "technical regulation" within th e meaning of the TBT Agreement.  We note, once 
again, that the definition of that term in Annex 1.1 provides as follows: 
"For the purpose of this Agreement, however, the following definitions shall apply: 
1. Technical regulation 
Document which lays down product charact eristics or their related processes and 
production methods, including the applicable  administrative provisions, with which 
compliance is mandatory.  It may also include  or deal exclusively with terminology, 
                                                     
 
456 European Communities' rebuttal submission, paras. 415.   
457 European Communities' response to Panel question No. 131. 
458 European Communities' comment on Australia 's response to Panel question No. 128. 
459 Annex C, para. 124.  WT/DS290/R 
Page 116  
 
 symbols, packaging, marking or labelling requirements as they apply to a product, 
process or production method."  [Explanatory note omitted] 
7.508  The Panel will first examine whether Articles 4 and 10, read together, are a "[d]ocument 
which lays down product characteristics or their re lated processes and produc tion methods, including 
the applicable administrative provisions".  If they are not, they cannot be a technical regulation within 
the meaning of this definition and it is unnecessary to examine whether "compliance [with it] is 
mandatory" or whether it applies to identifiable products.
460  
7.509  Australia claims that the inspection struct ures requirements lay down a "process" which is 
related to an identifiable group of products.  Whilst it appears that the specification for a particular 
product described in Article 4 must lay down pro duct characteristics and related production methods, 
Australia has not pursued a claim in respect of produ ct specifications except insofar as they relate to 
the inspection structures requirements.  
7.510  The Panel must consider whether the inspection structures requirements, read together with 
Article 4 of the Regulation, are a "process" within  the meaning of the definition of a "technical 
regulation".  The ordinary meaning of the term "process" can be defined as follows: 
"A thing that goes on or is carried on;  a continuous series of actions, events or 
changes;  a course of action, a procedure;  esp. a continuous and regular action or 
succession of actions occurring or performed in a definite manner;  a systematic 
series of actions or operations directed to some end, as in manufacturing, printing, photography, etc."
461 
7.511  Inspections of particular product specifications , in a general sense, may correspond to this 
definition.  However, the context of the term "techni cal regulation" in Annex 1 shows that it is one of 
a suite of definitions that includes "standard" a nd "conformity assessment procedures".  The terms 
"technical regulations" and "standards" themselves form  part of the definition of the term "conformity 
assessment procedures", which is defined as follows: 
"3. Conformity assessment procedures  
Any procedure used, directly or indirectly, to determine that relevant requirements in 
technical regulations or standards are fulfilled. 
Explanatory note 
Conformity assessment procedures include, inter alia , procedures for sampling, 
testing and inspection;  evaluation, ve rification and assurance of conformity;  
registration, accreditation and approval as well as their combinations." 
7.512  This definition shows that "conformity assess ment procedures" assess conformity with 
"technical regulations" and "standards".  This suggest s that they are not only distinct from one other, 
but mutually exclusive.  Whilst a single measure can combine both a technical regulation and a procedure to assess conformity with that technical regulation, it would be an odd result if a conformity assessment procedure could fall within the definition of a technical regulation as well.   
                                                     
 
460 These issues are set out in paras. 7.446 and following in relation to the claim under Article 2.1 of the 
TBT Agreement. 
461 The New Shorter Oxford English Dictionary (1993).  WT/DS290/R 
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 7.513  The object and purpose of the TBT Agreement is , in large part, disclosed by the two main 
groups of substantive provisions that it contains:  one that relates to technical regulations and 
standards in Articles 2 to 4, and another that rela tes to conformity assessment procedures in Articles 5 
to 9.  It is also reflected in the preamble, of wh ich the fifth recital, and also the third and fourth 
recitals, draw this distinction.462  If the Panel were to embed measures subject to Articles 5 to 9 in the 
definition of a technical regulation and thereby subject  them to the technical regulations provisions in 
Articles 2 to 4 as well, it would lead to an unreasona ble result.  In this respect, we note that the 
explanatory note refers to "procedures for ... insp ection" as an example of conformity assessment 
procedures.  This suggests  that a procedure for inspection is not a technical regulation. 
7.514  Turning to the Regulation, the Panel notes that the inspection structures provided for in 
Article 10 of the Regulation do not set out "a continuous series of actions, events or changes" or a 
"course of action, a procedure" within the ordinary  meaning set out at para graph 7.510 above.  It does 
not set out the steps that are to be undertaken to ensure compliance with a pr oduct specification, such 
as with the product specifications contained in Article  4 of the Regulation.  Rather, it merely sets out 
the requirements for the design of inspection authorit ies and private bodies.  It does not deal with the 
process by which these inspection authorities and pr ivate bodies are to conduct their inspections once 
they are established.  Further, these inspection structures may be excluded a priori from the definition 
of a "technical regulation" under the TBT Agreement, in  view of the context of that definition and the 
object and purpose of the Agreement, as explained at  paragraphs 7.511 to 7.513  above.  However, it is 
unnecessary to consider this issue furthe r for the purposes of this dispute. 
7.515  Therefore, the Panel concludes that the inspec tion structures requirements in the Regulation, 
read together with Article 4 of the Regulation, are not a "technical regulation" within the definition of 
that term in Annex 1.1 of the TBT Agreement.  Ac cordingly, the Panel concludes that Article 2.2 of 
the TBT Agreement is inapplicable and rejects Australia's claim.  
D. TRADEMARK CLAIMS  
1. The relationship between GIs and prior trademarks  
(a) Introduction  
7.516  Australia claims that the Regulation is inconsis tent with Article 16.1 of the TRIPS 
Agreement because it denies the owner of a registered trademark the exclusive right to prevent uses of 
GIs which would result in a likelihood of confusion with a prior trademark.463  Its claim does not 
concern conflicts involving the future acquisition of trademark rights and GIs.464  
7.517  The European Communities responds that this claim is unfounded for several reasons:  
(1) Article 14(3) of the Regulation, in fact, prevents  the registration of GIs, use of which would result 
in a likelihood of confusion with a prior trademark; (2) Article 24. 5 of the TRIPS Agreement provides 
                                                      
462 They provide as follows: 
"Recognizing  the important contribution that international standards and conformity 
assessment systems can make in this regard by improving efficiency of production and 
facilitating the conduct of international trade; Desiring  therefore to encourage the development of such international standards and 
conformity assessment systems ;  
Desiring  however to ensure that technical regulations and standards , including packaging, 
marking and labelling requirements, and procedures for assessment of conformity with 
technical regulations and standards do not create unnecessary obstacles  to international trade"  
[emphasis added] 
463 Australia's first written submission, paras. 6, 60 and 102-103.   
464 Australia's rebuttal submission, para. 95. WT/DS290/R 
Page 118  
 
 for the "coexistence" of GIs and prior trademarks ; (3) Article 24.3 of the TRIPS Agreement requires 
the European Communities to mainta in "coexistence"; and (4) in any event, Article 14(2) of the 
Regulation would be justified as a limited excep tion under Article 17 of the TRIPS Agreement.
465   
7.518  For the sake of brevity, the Panel uses the term "coexistence" in this report to refer to a legal 
regime under which a GI and a trademark can both be used concurrently to some extent even though 
the use of one or both of them would otherwise infringe the rights conferred by the other.  The use of 
this term does not imply any view on whether such a regime is justified. 
7.519  The Panel will begin its examination of this  claim by describing Article 14(2) of the 
Regulation and how the Regulation can, in principle,  limit the right of the owner of a trademark 
subject to Article 14(2) against the use of a GI.  We will then assess whether Article 14(3) of the 
Regulation prevents a situation from occurring in which a trademark would be subject to 
Article 14(2).  If Article 14(3) cannot prevent that  situation from occurring, we will proceed to 
examine whether Article 16.1 of the TRIPS Agreement requires Members to make available to trademark owners the right to prevent confusing uses of signs, even where the signs are used as GIs.  
If it does, we will consider whether Article 24.5 pr ovides authority to limit that right and, if 
Article 24.5 does not, conclude our  examination by assessing whether Ar ticle 17 or Article 24.3 of the 
TRIPS Agreement permits or requires the European Communities to limit that right with respect to 
uses of signs used as GIs. 
(b) Description of Article 14(2) of the Regulation  
7.520  Article 13 of the Regulation sets out the protecti on conferred by registration of a GI under the 
Regulation.  Paragraph 1 provides for the prevention of certain uses of the GI and other practices.  
These are negative rights to prevent, essentially, u ses which are misleading as to the origin of a 
product or otherwise unfair.   
7.521  Under the European Communities' domestic la w, it is considered that the Regulation 
impliedly grants the positive right to use the GI in accordance with the product specification and other 
terms of its registration to the exclusion of any other sign.  The European Communities explains, and 
Australia does not contest, that under the European Communities' domestic law, this positive right is 
implicit in several provisions, including Article 4(1) , which refers to eligibility to use a protected 
designation of origin or a protected geographical i ndication;  Article 8, which provides that the 
indications PDO and PGI and e quivalent national indications may appear only on agricultural 
products and foodstuffs that comply with the Regulation; and Article 13(1)(a) which provides 
protection for registered names against direct or indirect commercial use on certain conditions.  
Without this positive right, in the European Commun ities' view, the protection granted by Article 13 
would be "meaningless".  Accordingly, under the Eu ropean Communities' domestic law, that positive 
right prevails over the rights of trademark owne rs to prevent the use of a sign that infringes 
trademarks.
466 
7.522  A registered GI may be used together with other signs or as part of a combination of signs but 
the registration does not confer a positive right to use any such other signs or combination of signs or 
to use the name in any linguistic versions not entered in the register.467  Therefore, the registration 
does not affect the right of trademark owners to  exercise their rights with  respect to such uses.468   
                                                      
465 European Communities' first written submission, paras. 268-273. 
466 Confirmed in the European Communities' response to Panel question No. 139.    
467 The European Communities explains that "[t]he positive right extends only to the linguistic versions 
that have been entered into the register" in its response to Panel question No. 140; see also its rebuttal 
submission, paras. 288 and 293; response to Panel question No. 137 and comment on US response to that  WT/DS290/R 
 Page 119 
 
 
 7.523  Article 14 of the Regulation governs the relationship of GIs and trademarks under 
Community law.  Paragraph 1 deals with later trad emarks.  It provides for the refusal of trademark 
applications where use of the trademark would infri nge the rights in a GI already registered under the 
Regulation.  This, in effect, ensures that a registered GI prevails over a later trademark .   
7.524  Paragraph 2 of Article 14 deals with pr ior trademarks.  It provides as follows: 
"2. With due regard to Community law, a trademark the use of which engenders 
one of the situations indicated in Artic le 13 and which has been applied for, 
registered, or established by use, if that possibility is provided for by the legislation concerned, in good faith within the territory  of the Community, before either the date 
of protection in the country of origin or the date of submissi on to the Commission of 
the application for registration of the designa tion of origin or geographical indication, 
may continue to be used notwithstanding th e registration of a designation of origin or 
geographical indication, provided that no gr ounds for its invalidity or revocation exist 
as specified by Council Directive 89/194/EEC  of 21 December 1998 to approximate 
the laws of the Member States relating to trade marks and/or Council Regulation (EC) 
No 40/94 of 20 December 1993 on the Community trade mark."  [footnotes omitted] 
7.525  This is an exception to Article 13, as it provid es for the continued use of a prior trademark 
even though use of that trademark would conflict w ith the rights conferred by registration of a GI 
under the Regulation.  It prevents the exercise of rights conferred by registration of a GI against the 
continued use of that particular prior trademark and is an express recognition that, in principle, a GI 
and a trademark can coexist under Community law.  It is intended to implement Article 24.5 of the 
TRIPS Agreement.
469   
7.526  Article 14(2) only applies: 
(a) with respect to the GI, where a particul ar indication satisfies the conditions for 
protection, including the definitions of a "designation of origin" or a "geographical indication", and is not subject to refusal on any grounds, including those in 
paragraph 3 of Article 14 (discussed below);  
(b) with respect to the trademark, where a par ticular sign has already been applied for, 
registered, or established by use in good faith and there are no grounds for its invalidity or revocation; and 
(c) where use of that trademark would infringe the GI registration. 
                                                                                                                                                                    
 
question.  A different "linguistic version" means a translation which renders the name differently.  Some GIs are 
registered in more than one linguistic version:  see, for example, the second, four th and eleventh GIs set out 
supra  at note 61. 
468 Under Community law, those rights would become meaningless if there was no positive right to use 
the registered GI.  See the European Communities' rebutta l submission, para. 301;  responses to Panel questions 
Nos. 139 and 140 (but contrast its comment on Australia's response to Panel question No. 137).   
469 Paragraph 11 of the recitals to the April 2003 amending Regulation explained that the dates referred 
to in Article 14(2) should be amended in line with Article 24.5 of the TRIPS Agreement:  see Exhibit 
COMP-1h.  Article 14(2) has been interpreted once by the European Court of Justice, in Case C-87/97, 
Consorzio per la tutela del frommagio Gorgonzola v Käserai Champignon Hofmeister GmbH & Co Kg [1999] 
ECR I-1301, concerning the trademark CAMBOZOLA for cheese and the GI "Gorgonzola".  The judgement of 
the Court was submitted by the European Communities' in Exhibit EC-32. WT/DS290/R 
Page 120  
 
 7.527  The scope of Article 14(2) is confined temporally  to those trademarks applied for, registered 
or established by use either before the GI is protected  in its country of origin or before the date of 
submission to the Commission of an application for GI registration.   
7.528  The text of Article 14(2) begins with the introductory phrase "[w]ith due regard to 
Community law".  This refers, among other things , to the Community Trademark Regulation and the 
First Trademark Directive
470, both of which provide that trademark registration confers the right to 
prevent "all third parties" from certain uses of "any sign", including uses where there exists a 
likelihood of confusion.471  This corresponds to the right provided for in Article 16.1 of the TRIPS 
Agreement.   
7.529  However, Article 159 of the Community  Trademark Regulation, as amended472, provides as 
follows: 
"This Regulation shall not affect Counc il Regulation (EEC) No. 2081/92 on the 
protection of geographical indications and designations of origin for agricultural 
products and foodstuffs of 14 July 1992, a nd in particular Article 14 thereof."  
[original footnote omitted] 
7.530  This ensures that the rights conferred by a tr ademark registration against "all third parties" 
and uses of "any sign" do not prevail over a third party using a registered GI in accordance with its 
registration.  It does not limit the rights conferred by a trademark registration against any other third 
party.473  The same applies to trademarks protected unde r the national laws of the EC member States:  
due to the principle of the primacy of Community legislation, a trademark owner's rights cannot prevail over a third party using a GI register ed under the Regulation in accordance with its 
registration.  The rights conferred by a trademark registration against other third parties are not 
affected.   
7.531  Accordingly, the trademark owner's right pr ovided by trademark legislation in the 
implementation of Article 16.1 of the TRIPS Agreement, in principle, cannot be exercised against a 
person who uses a registered GI in accordance with its registration where the trademark is subject to 
Article 14(2) of the Regulation. 
7.532  The phrase "[w]ith due regard to Community law" also refers to other legislation, such as 
labelling and misleading advertising le gislation, which qualify the right to continue use of a trademark 
under Article 14(2).  Conversely, the same legislatio n allows persons, including trademark owners, to 
take action against certain uses of a registered GI which are not covered by the GI registration.
474 
7.533  Paragraph 3 of Article 14 provides as follows: 
"3. A designation of origin or geographi cal indication shall not be registered 
where, in the light of a trade mark's reputation and renown and the length of time it 
                                                      
470 European Communities' response to Panel question No. 138.  The "Community Trademark 
Regulation" refers to Council Regulation (EC) No. 40/9 4 on the Community trade ma rk, as amended by Council 
Regulation (EC) No. 1992/2003 and Council Regulation (EC) No. 422/2004, set out in Exhibit COMP-7.  The "First Trademark Directive" refers to the First Counc il Directive 89/104/EEC to approximate the laws of the 
member States relating to trade marks, set out in Exhibit COMP-6. 
471 Article 9 of the Community Trademark Regulation and Article 5 of the First Trademark Directive. 
472 Article 142 of the original Council Regulation (EC) No. 40/94 was renumbered Article 159 by 
Article 156(5) of Council Regulation (EC) No. 1992/2003. 
473 European Communities' first written submission, para. 317;  response to Panel question No. 76;  
rebuttal submission, para. 336. 
474 European Communities' response to Panel question No. 140.  WT/DS290/R 
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 has been used, registration is liable to mislea d the consumer as to the true identity of 
the product." 
7.534  This is a condition for the registration of a GI, as it provides for the refusal of registration of a 
GI that is liable to mislead the consumer as to the tr ue identity of the product in light of certain factors 
relevant to a prior trademark.  This, in effect, provides that a prior trademark may prevail over a later 
application for GI registration under certain conditions. 
7.535  The European Communities argues that Article 14(3) of the Regulation, together with the 
criteria for registrability of trademarks applied under EC law, prevent the registration of a GI, use of 
which would result in a likelihood of confusion with  a prior trademark.  Australia disagrees.  The 
Panel will consider this factual issue below. 
(c) Article 14(3) of the Regulation  
(i) Main arguments of the parties 
7.536  Australia argues that Article 14(3) of the Regulation does not concern use that is liable to 
"confuse" but rather concerns use that is liable to "mislead".  "Misleading" is a stricter evidentiary 
standard than "confusing".  The ordinary meaning of "confusing" is "perplexing, bewildering".  
Although the two words can be synonyms, the contex t of "mislead" in Article 22.2 and 22.3 of the 
TRIPS Agreement refers to misleading use which positively provokes an error on the part of a 
consumer.  The standard of confus ing established by Article 16.1 is a separate standard.  The wording, 
context and aim of Article 14(3) of the Regulation c onfirm that its use of "misleading" is similar to 
that in Article 22.2 and 22.3 of the TRIPS Agreemen t.  Therefore, the express terms of Article 14(3) 
do not exclude registration of GIs whose use would be confusing but not necessarily misleading.475  If 
this were not so, the reference in Article 14(2) to grounds for revocation of a trademark in the 
Community Trademark Regulation and Trademark Directive would be meaningless because those grounds include liability to "mislead the public ... as to ... geographical origin" and are distinguished 
from the exclusive right to prevent use where there exists a "likeli hood of confusion".  The reference 
to revocation imports that differentiation into the Regulation.
476  The word "confusion" is used in 
Articles 6.6, 7.5(b), 12.2, 12b(3) and 12d(3) of the Regulation in the sense of wondering about the 
source of the good, but the word "misleading" is used in Articles 3.2, 6.6, 13.1(c), 13.1(d) and 14.3 in 
the sense of an action which positively provokes an error on the part of the consumer.477  
7.537  Australia argues that Article 14(3) requires consideration of a trademark's reputation, renown 
and the length of time it has been used, which are not required by Article 16.1 of the TRIPS 
Agreement.  Trademark owners cannot exercise th eir rights against GIs where their use would be 
misleading for other reasons.  Trademarks that do not meet the tests expressly established by 
Article 14(3) of the Regulation cannot be protected by the right provided for in Article 16.1 of the 
TRIPS Agreement.478   
7.538  Australia notes that the right provided for in Article 16.1 of the TRIPS Agreement refers to 
where "such use would result in a likelihood of confusion" .  It argues that this implies that there is, or 
is intended to be, active use of a trademark and th at the right encompasses pre-emptive action.  The 
way in which the trademark rights have been acqui red does not affect the assessment as it is the 
                                                      
475 Australia's rebuttal submission, paras. 104-106; in its second oral statement it referred to the 
difference between "mislead" and "confuse" as causing a co nsumer to "mistake" the true identity of a product 
and to be "puzzled" about the true identity of a product: see para. 15. 
476 Australia's second oral statement, paras. 18-19. 
477 Australia's response to Panel question No. 149. 
478 Australia's rebuttal submission, paras. 107-108. WT/DS290/R 
Page 122  
 
 prospective use of the second sign that is in issue.  Reputation is not a prerequi site and it is possible to 
cause confusion with a registered trademark even wh ere it has little use and no reputation.  The right 
to prevent confusing use applies both at the time of the application for registration of the later 
trademark or GI and at later stages of use, incl uding in the case of changed circumstances which 
would result in a likelihood of confusion on the basis of a likelihood of confusion.
479 
7.539  Australia argues that the only instance in whic h Article 14(3) has been  applied shows that 
there was no consideration of the issue whether registration of the GI "Bayerisches Bier" would constitute confusing use in relation to the prior trademark "BAVARIA".
480  In response to a question 
from the Panel, Australia argued that the register ed GIs "Bayerisches Bier", "Budejovické pivo" and 
"Gorgonzola" could be used in accordance with their r espective registrations in a way that results in a 
likelihood of confusion with  particular trademarks.481  
7.540  Australia argues that the protection provided by the Regulation, in particular Article 13.1, 
makes clear that the owner of a registered trad emark would not be able to prevent "confusingly 
similar or identical use of a sign for similar or id entical goods".  The right of a trademark owner to 
initiate an infringement action on the grounds that a GI as used is different from the GI as registered 
depends on the circumstances of the case.  Trademarks registered in particular EC member States 
only, could still enjoy reputation in other EC me mber States.  The European Communities has not 
explained how owners of those trademarks woul d have standing to initia te legal action under 
labelling, misleading advertisi ng or unfair competition laws.482 
7.541  Australia notes that Article 7(4) of the Regulation provides that an objection is admissible if it 
"shows that the registration of the name proposed wo uld jeopardize the existence ... of a mark".  This 
refers to a threat to the very being of the mark wh ich is a far more rigorous standard than a likelihood 
of confusion.  This is also true of the French and Spanish versions of the Regulation.483   
7.542  Australia denies the allegation that it is reques ting a remedy against GI rights that it does not 
provide with respect to trademark rights under its own law.  It submits that the Panel should not 
consider the provisions of the trademark laws of other Members in isolation.  For example, whilst 
Australia's trademark law excepts certain actions fro m infringing an earlier trademark right, it applies 
only where the prior right holder expressly consente d to the coexistence or failed to prevent the 
acquisition of the later trademark right.484 
7.543  The European Communities argues that, as a factual matter, the risk of registration of a GI 
confusingly similar to a prior tr ademark is very limited due to the criteria for registrability of 
trademarks applied under EC law.  Moreover, Article  14(3) of the Regulation, if properly interpreted, 
is sufficient to prevent the registration of any confusing GIs.485  The complainant bears the burden of 
proving that its interpretation of Article 14(3) is the only reasonable one and that the European 
Communities' interpretation is not reasonable or that  the provision is being applied in a manner which 
results in the registration of confusing GIs.486  
7.544  The European Communities argues that the criteria  for the registrability of trademarks limit 
a priori the possibility of conflicts between GIs and earlier trademarks.  Geographical names are 
primarily non-distinctive and, as such, are not apt for registration as trademarks.  Their use may also 
                                                      
479 Australia's response to Panel question No. 148. 
480 Australia's rebuttal submission, para. 110. 
481 Australia's response to Panel question No. 137. 
482 Australia's response to Panel question No. 137. 
483 Australia's rebuttal submission, para. 133;  second oral statement, paras. 20-21 and 23.   
484 Australia's comment on EC responses to Panel question Nos. 137 and 139. 
485 European Communities' first written submission, paras. 275-277. 
486 European Communities' first written submission, pa ra. 292;  rebuttal submission, paras. 271-276.  WT/DS290/R 
 Page 123 
 
 
 be deceptive insofar as they are used for goods that do not originate in the location that they designate.  
Under EC law, they may only be registered as a trademark where the geographical name is not 
currently associated, and it can reasonably be assumed th at it will not be associated in the future, with 
the product concerned; or where the na me has acquired distinctiveness through use.487 
7.545  The European Commission considers that the crite ria listed in Article 14(3) of the Regulation 
are not exhaustive, so that other relevant criteria may be taken into account in order to assess whether 
the registration of the GI will result in a likelihood of  confusion, such as the similarity between the 
signs or between the goods concerned.  The likeli hood of confusion will depend to a large extent on 
the degree of distinctiveness which the trademark has acquired through use.  A trademark consisting 
of a GI, which has never been used or has no reputa tion or renown, should not have been registered in 
the first place because it would lack  the required distinctiveness.488  The length of time a trademark 
has been used does not limit Article 14(3) to cases wh ere the trademark has been used for a long time 
as it is conceivable that a trademark which has been used for a relatively short period of time may have become strongly distinctive through other means, e.g. publicity.
489  It asserts that Australia bears 
the burden of proving that the EC's interpretation of  "misleading" is less reasonable or that it is 
impossible to interpret "misleading" consistently with  Article 16.1.  One of the ordinary meanings of 
"misleading" is "confusing".490   
7.546  The European Communities informs the Panel th at the only instance in which Article 14(3) 
has been applied was the registration of "Bayerisches Bier" as a GI.  There was no suggestion that this 
decision was based on the fact that the trademarks concerned were not famous enough or had not been 
used for long enough.  The complainants have not identified an example of a GI which gives rise to a 
likelihood of confusion with an earlier trademark.   Registration covers only the term in the 
specification and not its translations  into other languages unless the term is the same in translation.  
The three Czech beer GIs also contain a unique endor sement that they apply "without prejudice to any 
beer trademark or other rights existing in the European Union on the date of accession".491 
7.547  The European Communities argues that Article 14(3) requires the EC authorities to refuse 
registrations and does not allow for a margin of discr etion.  It can be invoked before the courts after 
registration of a GI, including in trademark infringeme nt proceedings brought against a user of a GI.  
This applies to registrations under the ordinary pro cedure in Article 6 or the "fast-track" procedure in 
Article 17.  A trademark owner may raise the inva lidity of the measure before the courts under the 
preliminary ruling procedure in Article 234 of  the EC Treaty.  Depending on the factual 
circumstances of each case, a trademark owner may also have standing to bring an action in 
annulment under Article 230 of the EC Treaty, if a GI registration were considered to affect adversely 
specific substantive trademark rights.  A two-month ti me limit applies to the action in annulment and, 
in specific circumstances, may also a pply to the preliminary ruling procedure.492  Under both 
procedures, judicial review is available on points of fact and law.  The cancellation procedure is set out in Article 11a of the Regulation and th e grounds mentioned in Articles 11 and 11a are 
exhaustive.
493   
7.548  The European Communities notes that Article 7(4) of the Regulation provides that an 
objection is admissible if it "shows that the regi stration of the name proposed would jeopardize the 
                                                      
487 European Communities' first written submission, pa ras. 278-285;  rebuttal submission, para. 270. 
488 European Communities' first written submission, paras. 286-291. 
489 European Communities' response to Panel question No. 68. 
490 European Communities' second oral statement, para. 162.   
491 European Communities' rebuttal submission, paras. 286-293;  response to Panel question No. 142. 
492 European Communities' responses to Australia's que stions Nos. 2 and 3 afte r the second substantive 
meeting. 
493 European Communities' responses to Panel questions Nos. 67 and 142;  rebuttal submission, 
paras. 294-297; second oral statement, paras. 174-179. WT/DS290/R 
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 existence ... of a mark".  It argues that this language is broad enough to encompass any instance of 
likelihood of confusion with any mark.  Logically, Ar ticle 14(3) must permit re gistration to be refused 
in such cases.  Article 7(5)(b) refers expressly to  a decision having regard to the "likelihood of 
confusion".
494   
7.549  The European Communities argues that Community law provides th e means to prevent use of 
a registered GI in a confusing manner.  Failure to comply with the product specifications in the 
registration may lead to cancellation.  The right co nferred by registration does not extend to other 
names or signs not in the registration.  Registration does not cover translations.  A presentation of a GI in a mutilated or deformed manner may be deemed different from the registered sign and not 
protected.  Use of a GI is subject to the Community directives on labelling, presentation and 
advertising of foodstuffs and on mi sleading advertising and the EC member States' unfair competition 
laws.
495   
7.550  The European Communities argues that few, if any, Members provide a remedy to prevent 
confusing use of a registered trademark without fi rst obtaining cancellation, invalidation or revocation 
of the trademark registration.  In the same way, Community law does not provide a remedy to prevent 
use of a registered GI on the grounds that it is c onfusing, although the trademark owner may request a 
judicial ruling that the GI registration is invalid on those grounds.496   
(ii) Main arguments of third parties 
7.551  Argentina , Brazil , India and Mexico indicated, in response to a question from the Panel, that 
they were not aware of any GIs registered under th e Regulation that were identical or confusingly 
similar to a trademark owned by their respec tive nationals and protected in the European 
Communities.497 
7.552  Brazil  argues that Article 16.1 of the TRIPS Agreem ent deals with trademarks in general and 
not only with those referred to in the narrow terms of  Article 14(3) of the Regulation, which refers to 
the trademark's reputation, renown, and the length of time it has been used, and its liability to mislead 
the consumer as to the true identity of the product.498 
7.553  New Zealand argues that Article 14(3) conditions the rights of a prior registered trademark 
owner on certain factors, such as reputation, renown and length of time of use, for which there is no 
basis in Article 16.1 of the TRIPS Agreement.499 
7.554  Chinese Taipei argues that Article 14(3) of the Regulation only prevents the registration of a 
trademark if it fulfils the conditions of reputation, renown and length of time of use.  This provision 
negates the right granted to trademark owners pur suant to Article 16.1 of the TRIPS Agreement.500 
(iii) Consideration by the Panel 
7.555  Australia does not take issue in this dispute with trademark rights acquired after a GI is 
registered.  Therefore, there is no need to consider  Article 14(1) of the Regulation.  Moreover, it does 
not take issue in this dispute with the dates for establishing which trademarks are considered earlier 
                                                      
494 European Communities' first written submission, para. 336;  response to Panel question No. 68;  
rebuttal submission, paras. 282-285. 
495 European Communities' response to Panel question No. 63;  rebuttal submission, paras. 298-303. 
496 European Communities' second oral statement, para. 181; response to Panel question No. 139. 
497 See their respective comments in Annex C, see paras. 19, 37, 106 and 120.   
498 Annex C, para. 29. 
499 Annex C, paras. 148-152. 
500 Annex C, para. 178.  WT/DS290/R 
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 than a GI under Article 14(2) of the Regulation.  Th erefore, there is no need to consider that issue 
either.  
7.556  Australia challenges coexistence under the Regula tion "as such".  It relies on the fact that 
Article 14(2) of the Regulation, on its face, can apply to certain trademarks and, when it does, the 
Regulation will limit the right of the owner of such a trademark against the use of a GI.501 
7.557  The parties largely agree on the factual implications, in principle, of the application of 
Article 14(2).  It allows the continued use of a tr ademark on certain conditions but, at the same time, 
the Regulation confers a positive right to use a GI  which prevents the owner of a trademark from 
exercising the right conferred by that trademar k against a person who uses a registered GI in 
accordance with its registration.  The particular right of a trademark owner at issue is the right to prevent uses of a sign that would result in a likeliho od of confusion, which is discussed in paragraphs 
7.598 to 7.603 below.   
7.558  The European Communities' first defence is that  Article 14(3) can prevent the registration of 
any GI which would subject a prior trademark to Article 14(2), where the GI could be used in a 
manner that would result in a likelihood of confusion.  This is a factual issue for the Panel to decide.  
This involves matters of interpretation of an EC  Regulation which forms part of the European 
Communities' domestic law.  It is necessary for th e Panel to make an objective assessment of the 
meaning of this provision, although solely for the purpose of determining the European Communities' 
compliance with its WTO obligations.
502   
7.559  As a preliminary remark, the Panel does not consider that this defence is necessarily 
contradicted by the European Communities' other de fences that it is fully entitled and even required 
under the TRIPS Agreement to apply its coexiste nce regime, regardless of whether a GI would 
otherwise infringe the rights in a prior trademark.   However, given that this is the European 
Communities' view of its rights and obligatio ns under the TRIPS Agreement, it would seem 
coincidental if Article 14(3) of the Regulation could operate in a way that a GI would never, in fact, 
otherwise infringe the rights in a prior trademark. 
7.560  Turning to the text of Article 14(3) of the Re gulation, the Panel's first observation is that 
Article 14(3) requires GI registration to be refused where it would be "liable to mislead the consumer 
as to the true identity of the product".  This is limit ed to liability to mislead as to a single issue, and 
not with respect to anything else.   
7.561  The Panel's second observation is that Article 14( 3) specifically prohibits GI registration "in 
light of a trade mark's reputation and renown and the length of time it has been used".  It is clear that 
these factors must all be taken into account in the a pplication of Article 14(3).  It is difficult to 
imagine how Article 14(3) could be applied without some consideration of the similarity of the signs 
and goods as well.503  However, even if these factors are not  exhaustive, and even if they do not 
require strong reputation, wide renown and long use, they indicate that the scope of Article 14(3) is 
limited to a subset of trademarks which, as a minimum, excludes trademarks with no reputation, 
                                                      
501 Although Article 14(2) of the Regulation is drafted as an exception to GI protection in Article 13, it 
is not disputed that in most of the situations described in Article 13, in which Article 14(2) applies, the use of 
the GI would otherwise constitute infringement of the trad emark.  If Article 14(3) were able to prevent the 
registration of any GI, use of which could otherwise co nstitute a trademark infringement, Article 14(2) would be 
redundant in all of these situations. 
502 In this regard, the Panel recalls  its comments at para. 7.106. 
503 Article 14(3) presupposes the applicability of Ar ticle 13, which requires a consideration of the 
similarity of the goods and signs. WT/DS290/R 
Page 126  
 
 renown or use.  Otherwise, Article 14(3) does not pr event the registration of a GI, on the basis that its 
use would affect any prior trademark outside that subset.   
7.562  The Panel's third observation on the text of Article  14(3) is that it does not refer to use (of the 
GI), or to likelihood or to confusion, when other provisions of the Regulation do.  Articles 7(5)(b), 
12b(3) and 12d(3) permit refusal of a GI registrati on "having regard to" or "taking account of" factors 
including the "actual likelihood of confusi on" and the "actual risk of confusion".
504  This indicates that 
the standard in Article 14(3) that registration woul d "mislead the consumer as to the true identity of 
the product" is intended to apply in a narrower set of circumstances than th e trademark owner's right 
to prevent use that would result in a likelihood of confusion.505 
7.563  For these reasons, the Panel considers that Au stralia has made a prima facie case that 
Article 14(3) of the Regulation cannot prevent all situations from occurring in which Article 14(2) 
would, in fact, limit the rights of a trademark owner.   
7.564  Consistent with this view, it can be noted th at the European Communities specifically rejected 
a proposal by a Committee of the European Parliament  to amend Article 14(2) so as to subject it to the 
trademark owners' rights when Article 14 was amended in April 2003.506  This at least suggests that 
Article 14(3) was considered different from a blanket protection of trademark rights. 
7.565  The European Communities has submitted that Au stralia's interpretation of Article 14(3) 
would conflict with Article 7(4), which provides th at a statement of objection shall be admissible 
inter alia  if it shows that the proposed GI registration would jeopardize the existence of a mark.  It 
asserts that this language encompasses any instan ce of likelihood of confusion between the proposed 
GI and a prior trademark.507  It has not explained why the text does not set forth the likelihood of 
confusion standard, when the following provision of  the Regulation in Article 7(5)(b) does.  The 
contrast is marked.  Article 7(5)(b) sets out a procedure to reach ag reement in cases where an 
objection is admissible, which appears to indicate th at it contains a lower standard than the ground for 
objection in Article 7(4). 
7.566  The European Communities has submitted that th e criteria for registrability of a trademark 
limit a priori the risk of GIs being confused with a prio r trademark, but it does not submit that they 
completely eliminate this risk.  The evidence show s that signs eligible for protection as GIs can and 
have been registered as trademarks in the Community.508  The European Communities has not shown 
that the criteria for registrability of trademarks ca n anticipate adequately a situation in which a GI 
could be used in a way that results in a like lihood of confusion with a trademark, wherever 
Article 14(3) of the Regulation does not provide for re fusal of registration of a GI.  Those criteria and 
Article 14(3) would have to offset each other in every case.  However, Article 14(2) and (3) apply to 
trademarks that are already protected.  They cannot  apply to signs which do not satisfy the trademark 
                                                      
504 Articles 7(5)(b) and 12d(3) do not apply to GIs located in third countries.  To the extent that they 
apply to GIs located in the European Communities', they only apply in limited circumstances where there is an 
admissible objection from an EC member State, other than the one which transmitted the application, or a third country, and they do not provide that the actual likelihood or risk of confusion is an absolute ground for refusal. 
505 The TRIPS Agreement does not define the terms "likelihood of confusion" and "mislead the public 
as to the geographical origin".  These terms define the scope of protection provided for in Articles 16.1 and 22.2 of the TRIPS Agreement and apply in a very wide range of factual situations.  Therefore, the Panel considers it 
inappropriate to embark on a detailed interpretation of these or similar terms unless necessary for the purposes 
of the resolution of the dispute, which is not the case here.    
506 The Committee proposal is set out in Exhibit COMP-14. 
507 European Communities' response to Panel question No. 68;  rebuttal submission, paras. 282-285. 
508 For example, the following are registered Co mmunity trademarks: CALABRIA for pasta;  DERBY 
for milk and chocolate based products; WIENERWALD for prepared meals, condiments and other goods and 
services.      WT/DS290/R 
 Page 127 
 
 
 registrability criteria, either because they are ge ographical names or for whatever other reason, and 
have been refused registration, are subject to i nvalidation or are otherwise unprotected.  These signs 
are filtered out before Article 14 of the GI Regulation comes into play.  Given that Article 14(3) applies to a subset of protected trademarks, those to which it does not apply have by definition already 
satisfied the trademark registrability criteria.   
7.567  There is also the question of how Article 14( 3) can protect a trademark owner's right to 
prevent uses which occur subsequent to GI registratio n.  In response to a question from the Panel as to 
whether Article 14(3) could be invoked if use of  the GI would otherwise infringe the trademark 
subsequent to GI registration, the European Communities submitted that it could.
509  The parties then 
made various submissions on this point, based on wh ich the Panel makes the following observations:   
(a) the Regulation does not refer to invalida tion under Article 14(3).  It sets out 
cancellation procedures in Articles 11 and 11a, the grounds for which do not appear to relate to improper application of Artic le 14(3).  If invalidation procedures are 
possible, it would be as a matter of general Community law under the EC Treaty; 
(b) Article 230 of the EC Treaty provides a pr ocedure for a direct challenge to the 
validity of a Community measure before the Court of First Instance of the European 
Communities on the condition that the app licant "is directly and individually 
concerned" by the measure.  It is not submitted by any party that all trademark 
owners can satisfy that condition.  Further,  this procedure is subject to a two-month 
time limit which could rende r it unavailable to certain trademark owners who did 
satisfy that condition
510;  
(c) Article 234 of the EC Treaty provides a procedure for an indirect challenge to a 
Community measure under which a court of an EC member State can refer a question to the European Court of Justice for a preliminary ruling.  This procedure could be invoked in a trademark infringement proceeding to obtain invalidation of a GI registration.  It is not clear in what circ umstances this procedure is available to a 
trademark owner who could have invoked th e Article 230 procedure.  The procedure 
under Article 234 would only be available wh ere the court of the EC member State 
considered the question of validity of th e GI necessary to resolve the trademark 
infringement action.  In any case, the decision not to refuse a registration under Article 14(3) of the Regulation would be in terpreted in the preliminary ruling as at 
the time of that decision, and not at the ti me of the subsequent allegedly infringing 
use
511;  and 
(d) Article 14(3) is apparently not mandatory in all cases as three GIs registered in 
accordance with the terms of an Act of A ccession to the European Union cannot be 
invalidated on the basis of Article 14(3).512 
7.568  In light of these observations, the Panel considers that there is no evidence to show that it is 
possible to seek invalidation of a GI registration under Article 14(3) in all cases in which use of a GI 
                                                      
509 European Communities' response to Panel question No. 67; see also rebuttal submission, paras. 270 
and 296.  The Panel's findings do not imply any view on whether a requirement to seek GI invalidation as a 
condition precedent to obtaining relief against trademark infringement would be consistent with the enforcement 
obligations under th e TRIPS Agreement. 
510 Australia's comment on EC response to Panel question Nos. 159 and 160;  European Communities' 
second oral statement, para. 177.   
511 Australia's comment on EC responses to Panel question Nos. 159 and 160;  European Communities' 
second oral statement, para. 178.   
512 European Communities' response to Panel question No. 142(c). WT/DS290/R 
Page 128  
 
 would otherwise infringe a prior trademark.  In those cases where it is not possible, it would be 
necessary for the owner of a prior trademark to be ab le to anticipate, at the time of the proposed GI 
registration, all subsequent uses of the proposed GI  that would result in a likelihood of confusion.  
There is no reason to believe that this is possible.   The evidence submitted to the Panel shows that GI 
registrations under the Regulation simply refer to names without limiting the way in which they are 
used.   
7.569  The European Communities has submitted that the food labelling and mi sleading advertising 
directives and unfair competition laws of the EC me mber States also prevent confusing uses.  We 
understand, and the European Communities does not deny , that this is only possible where the use is 
not in accordance with the GI registration.  In any ev ent, the scope of the directives is narrower than 
that of the GI Regulation and the standards whic h they apply are different from the right of a 
trademark owner to prevent use which would result in a likelihood of confusion, for the following reasons: 
(a) the food labelling directive only applies to th e labelling of foodstu ffs to be delivered 
as such to the ultimate consumer and cert ain aspects relating to the presentation and 
advertising thereof.  It provides that "labe lling and methods used must not be such as 
could mislead the purchaser to a material degree, particularly ... as to the characteristics of the foodstuff and, in particul ar, as to its nature, identity, properties, 
composition, quantity, durability, origin or provenance, method of manufacture or production"
513;  and   
(b) the misleading advertising directive applies to "any advertising which in any way, 
including presentation, deceives or is likel y to deceive the persons to whom it is 
addressed or whom it reaches and which, by reason of its deceptive nature is likely to 
affect their economic behaviour or which, for those reasons, injures or is likely to 
injure a competitor".514   
7.570  The unfair competition laws of the EC member States apply subject to the terms of 
registration under the Regulation, due to  the primacy of Community law.  It is not clear to what extent 
these laws apply in addition to the Regulation but, to the extent that they do, they use various 
standards, some of which require deception, which is narrower than confusion, and some of which 
appear only to apply the misleading standard which is embodied in the Regulation itself.515 
7.571  Australia also refers to some specific cases in which the Regulation has been applied in 
support of its claim, as set out in the following paragraphs.   
7.572  Article 14(3) of the Regulation has only b een applied once.  This was the case of 
"Bayerisches Bier", which was registered as a prot ected geographical indication in 2001 subject to the 
proviso that the use of certain prior trademar ks, for example, BAVARIA and HØKER BAJER, was 
permitted to continue under Article 14(2).  The GI refers to a beer  and the trademarks are registered in 
                                                      
513 Articles 1 and 2(1)(a)(i) of Directive 2000/13/EC of  the European Parliament and of the Council on 
the approximation of the laws of the Member States re lating to the labelling, presentation and advertising of 
foodstuffs, referred to in the European Communities' resp onses to Panel question No. 63, fn 38, and reproduced 
in Exhibit EC-30. 
514 Article 2(2) of Council Directive 84/450/EEC rela ting to the approximation of the laws, regulations 
and administrative provisions of the Member States concerning misleading advertising, referred to in the European Communities' responses to Panel question No . 63, fn 39, and reproduced in Exhibit EC-31. 
515 See information supplied by the European Commun ities' and some of its member States to the 
Council for TRIPS in the review under Article 24.2 of  the TRIPS Agreement, document IP/C/W/117/Add.10, 
reproduced in Exhibit EC-29.  The European Communities' did not supply information on the unfair competition 
laws of its ten new member States.  WT/DS290/R 
 Page 129 
 
 
 respect of beer.  The GI and the trademarks are, respectively, the words "Bavaria" or "Bavarian Beer" 
rendered in the German, English and Danish langu ages.  Upon its registration, the EC Council 
concluded that the GI would not mislead the public as to the identity of the product, which is the standard embodied in Article 14(3) of the Regulation.
516 
7.573  Australia alleges that the GI "Bayerisches Bier " could be used in a manner that would result 
in a likelihood of confusion with these prior trademarks.517  In response to a direct question from the 
Panel, the European Communities did not deny this specific allegation.  It only responded that "in principle" a name registered fo llowing the assessment required by Article 14(3) "should not give rise 
to confusion when used subsequent ly" and submitted that "in practice" this may happen only when the 
registered name is used together with other signs or as part of a combination of signs.  This was a 
conspicuous choice of words because in the same  response it commented in detail on two other 
specific cases which it considered irrelevant to the dispute.
518   
7.574  Australia also alleges that three Czech beer GIs, "Bud ĕjovické pivo", " Českobudĕjovické 
pivo" and "Bud ĕjovický m ĕšt’anský var" could be used in a ma nner that would result in a likelihood 
of confusion with the prior trademarks BUDWEI SER and BUD, registered in respect of beer.519  In 
response to a direct question from the Panel, the European Communities did not deny that these GIs 
could be used in a manner that would result in a lik elihood of confusion with these prior trademarks.  
Instead, it pointed to an endorsement on the three GI registrations that they apply "without prejudice 
to any beer trademark or other rights existing in  the European Union on the date of accession".520  
This might imply that it accepts a likelihood of confusion, but considers that there are other means besides Article 14(3) to deal with that.   
7.575  There appears to be an inconsistency betw een the European Communities' position that 
Article 14(3) of the Regulation, in practice, prevents  the registration of GIs, use of which would result 
in a likelihood of confusion with a prior trademark,  and its decision to avoid contesting that there may 
be circumstances in which the four specific GIs re ferred to above could be used which would not 
result in such a likelihood of confusion with these specific prior trademarks.   
7.576  For the above reasons, the Panel considers th at the European Communities has not rebutted 
Australia's prima facie case that Article 14(3) of the Regulation cannot prevent all situations from 
occurring in which a trademark would be subject to Article 14(2) and, hence, in which the Regulation 
would limit the rights of the owner of such a trademark.   
7.577  The Panel will now proceed to examine whether the TRIPS Agreement requires Members to 
make available to trademark owners rights against signs when they are used as GIs. 
                                                     
 
516 Council Regulation (EC) No. 1347/2001 reproduced in Exhibit EC-9. 
517 See Australia's response to Panel question No. 137. 
518 The European Communities submitted twice that the EC Council had concluded that the registration 
of this GI would not lead to a likelihood of confusion w ith these prior trademarks but this is different from the 
EC Council's conclusion as stated in the decision on registration.  The European Communities later indicated in 
response to a question from the Panel that the EC Council's conclusion was that the signs were not sufficiently 
similar to mislead the public, which is closer to the wording of the conclusion as stated in the decision, but not necessarily a likelihood of confusion:  see European Co mmunities' first written submission, fn. 140 to para. 288; 
rebuttal submission, para. 287; and responses to Panel questions Nos. 137 and 143 and compare Council 
Regulation (EC) No. 1347/2001 supra  at 516 and the Commission Guide to the Regulation (August 2004 
edition, p. 12) in Exhibit EC-64. 
519 The evidence indicates that thes e trademarks are registered in at  least two EC member States and 
rights to them appear to have been acquired through use in another EC member State: see Exhibits US-53, 
Section 3.6;  US-51, para. 26; and US-82.  
520 European Communities' rebuttal submission, paras. 286-293;  response to Panel question No. 142. WT/DS290/R 
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 (d) Relationship between protection of GIs and prior trademarks under the TRIPS Agreement 
(i) Main arguments of the parties 
7.578  Australia argues that nothing in the TRIPS Agreement justifies a failure to grant the right 
provided for in Article 16.1.  Had the negotiators intended to permit Members to act inconsistently 
with this obligation, they would have said so explicitly.  Article 17 is an express exception to 
trademarks and nothing in Section 3 of Part II on GI protection could be interpreted in such a way as 
to create an exception to trademarks.
521   
7.579  Australia does not argue that trademarks must prevail over later GIs.522  Rather, it argues that 
Article 24.5, together with Articles 22.3 and 23 .2, defines the boundaries of the range of possible 
actions open to a Member to implement GI  protection in relation to trademarks.523  Article 24.5 does 
not require or permit any negation or other li mitation of the trademark owner's right under 
Article 16.1.524  It can only be an exception to the provisions of Section 3 on GI protection in view of 
its location and title.525  It also creates a positive right that specified trademark rights cannot be 
adversely affected.526   
7.580  Australia argues that the "validity of the regist ration of a trademark" refers to the ongoing 
legality of the good faith registration of a trademark.  The legal bundle of rights contained in a validly 
registered trademark includes the exclusive right to  prevent confusing use granted under Article 16.1.  
Measures adopted to implement GI protection cannot undermine that exclusive right.  The "right to use a trademark" refers to the ongoing ability to use a trademark to which rights have been acquired 
through use.  Measures adopted to implement GI  protection cannot adversely affect such rights.
527  
Whatever may have been intended by the phrase the "right to use a trademark", it is separate from, 
and additional to, the exclusive right to pr event confusing uses required under Article 16.1.528  It is not 
required under Section 2 of Part II.529  Article 24.5 does not refer to the "exclusive" right to use a 
trademark because trademark rights acquired through use are not always exclusive.530   
7.581  Australia argues that there is no conflict be tween Articles 16.1 and 22.  With respect to 
Article 22.2, the only relevance of Article 22.2(a) to trademark rights would be in the context of 
acquisition of new trademark rights.531  With respect to Article 22.3, for example, Australian 
trademark law expressly provides that registration of a trademark may be opposed if it contains or 
consists of a false GI.532 
7.582  Australia argues that a complaining party bears the burden of proof where it alleges a breach 
of obligations pursuant to Article 24.5 but a res ponding party bears the burden of proof where it relies 
on Article 24.5 to excuse or justify a measure's in consistency with another provision.  Article 24.5 
                                                      
521 Australia's first written submission, para. 104. 
522 Australia's rebuttal submission, para. 96. 
523 Australia's first written submission, para. 74. 
524 Australia's first written submission, para. 106; response to Panel question No. 72. 
525 Australia's response to Panel question No. 78;  rebuttal submission, para. 93. 
526 Australia's response to Panel question No. 145. 
527 Australia's response to Panel question No. 76;  rebuttal submission, para. 100. 
528 Australia's response to Panel question No. 77. 
529 Australia's rebuttal submission, para. 99. 
530 Australia's rebuttal submission, para. 100. 
531 Australia's response to Panel question No. 146. 
532 Australia's response to Panel question No. 79.  WT/DS290/R 
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 does not alter the scope of Article 16.1 but confirms  the continued applicability of the rights granted 
under Article 16.1 in the circumstances covered by Article 24.5.533 
7.583  The European Communities responds that this claim is unfounded.534  The TRIPS 
Agreement recognizes trademarks and GIs as intell ectual property rights on the same level, and 
confers no superiority to trademarks over GIs.  The provisions of Section 3 of Part II on GI protection 
are not "exceptions" to the provision of Article 16.1 on  trademark rights.  The criteria for registrability 
of trademarks limit a priori the possibility of conflicts between GI s and trademarks but conflicts may 
arise.  Article 16.1 does not address this issue.  Rather, the boundary between  GIs and trademarks is 
defined by Article 24.5 which provides for coexisten ce with earlier trademarks.  Article 24.5 must be 
read with Articles 22.3 and 23.2 which also pr ovide protection to GIs vis-à-vis trademarks.535  
Section 2 of Part II cannot be applied without having regard to Section 3.536 
7.584  The European Communities argues that Article 24.5 has two implications:  (1) with respect to 
grandfathered trademarks (or app lications): (a) Members are not allowed to prejudice the validity of 
the registration (or the eligibility of the application or the right to use the trademark), but (b) Members 
may prejudice other rights of the trademark owner, in cluding in particular the right to prevent others 
from using the sign of which the trademark consists ; and (2) with respect to other trademarks (or 
applications), Members may prejudice any right.537   
7.585  The European Communities argues that the ordinary  meaning of the word "prejudice" used in 
all three official versions includes the notion of "j udge beforehand" but only the word in the English 
version includes the notion of "cause injury, damage or harm".538  The phrase "validity of the 
registration" does not necessarily imply that the registration must confer exclusive rights vis-à-vis all 
third parties.  The fact that the owner cannot preven t use of the same or a similar sign by the GI right 
holder does not mean that the registration is set aside .  The phrase "the right to use a trademark" refers 
to the basic right of the trademark owner to use the trademark, whether it has been acquired through 
registration or use.539  It is the right to use a sign, which is different from the right to prevent others 
from using the same or a similar sign.  If that ri ght were inherent in the term "validity of the 
registration", it would have been supe rfluous to refer to the "right to use a trademark" as well.  If that 
right had been intended, the drafters would have refe rred to the "exclusive right to use a trademark".  
If that right were inherently exclusive, it would ha ve been superfluous to provide in Article 16.1 that 
the owners of trademarks shall have exclusive ri ghts.  The drafting history shows that the Brussels 
Draft referred to the continued use of a GI as a tr ademark, which envisaged co existence, in a separate 
provision from the predecessor to Article 24.5.  Its tr ansfer to Article 24.5 in the final version did not 
alter its meaning or purpose.540   
7.586  The European Communities argues that Article 24.5 is drafted in mandatory terms and 
imposes self-standing obligations which go beyond t hose in Section 2 of Part II.  This may be 
illustrated by the case of a Member which provides for the refusal or invalidati on of registration of a 
trademark in terms broader than those in Article 22.3, or which prohibits the use of any trademark 
acquired by use in terms broader than those in Article  22.2.  Both would be consistent with Section 2 
                                                      
533 Australia's response to Panel question No. 75(a). 
534 European Communities' first written submission, paras. 269-273. 
535 European Communities' first written submission, paras. 294-300. 
536 European Communities' rebuttal submission, paras. 306-307. 
537 European Communities' first written submission, para. 301. 
538 European Communities' comment on US response to Panel question No. 145. 
539 European Communities' first written submission, pa ra. 305; response to Panel question No. 76.  
540 European Communities' response to Panel questio n No. 76; rebuttal submission, paras. 327-328.  WT/DS290/R 
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 of Part II but Article 24.5 would prevent either ap plying to prior trademarks.  This would be an 
obligation arising exclusively under Article 24.5.
541   
7.587  The European Communities argues that if Ar ticle 24.5 did not allow coexistence, the 
protection of GIs provided under S ection 3 of Part II would become pointless whenever there is a 
grandfathered trademark.  The phrase "measures ad opted to implement this Section" assumes that 
Members will continue to protect GIs notwithstandi ng the existence of grandfathered trademarks.  
Coexistence may not be a perfect solution to resolv e conflicts between different types of intellectual 
property rights but there is no such perfect solution.542  It is not an unusual solution, since coexistence 
is envisaged in Articles 23.2 (with respect to a GI and a trademark that is not misleading), 23.3, 24.3 (where pre-existing protection provided for coex istence) 24.4 and 16.1 (vis-à-vis existing prior 
rights).
543  Article 24.5 embodies a compromise.  The Eu ropean Communities and other participants 
agreed to make it mandatory on the understanding th at the trademark owners would have the right to 
use the trademark but not the right to exclude use by GI right holders.544 
7.588  The European Communities argues that there is  no "conflict" between Articles 16.1 and 22.3 
but that there is a potential "conflict" between  Articles 16.1 and 22.2(a), and possibly 23.1.  
Article 22.2 confers on GI right holders the right to prevent certain uses of trademarks, which may 
conflict with the right of the trademark owner under Ar ticle 16.1 to prevent certain uses of signs.  The 
simultaneous exercise of both rights would lead to a situation where neither the trademark owner nor 
the GI right holders could use the sign in question.  Neither would be able to fulfil its purpose.  This 
conflict is resolved by Articles 22.3, 23.2 and 24.5.545   
7.589  The European Communities argues that only the object and purpose of the treaty as a whole is 
relevant to the general rule of treaty interpretation.  To the extent that the exclusivity of a trademark is 
an object and purpose of the TRIPS Agreement, it subm its that exclusivity is as essential to a GI or 
even more essential, because the choice of a GI is not arbitrary, unlike a trademark, and the 
establishment of a GI takes longer than a trademark.546 
7.590  The European Communities argues that the complainant bears the burden of proof that a 
measure falls within the scope of the obligations provided in Article 16.1.  Article 24.5 is not an 
exception but defines the boundary between the obliga tions in Article 16.1 and a Member's right to 
implement GI protection.  It does not provide an exemption from an obligation but places a limit on the measures that Members must or may take when  implementing GI protection under Section 3 of 
Part II.  It confers a right to use a trademark, a right which owners of trad emarks acquired through use 
do not have under Article 16.1 because rights the basis of use are optional under Article 16.1.  It notes 
that Australia cited Article 24.5 in its request for establishment of a panel and makes a claim under 
that provision in its first written submission.
547   
(ii) Main arguments of third parties 
7.591  Argentina argues that coexistence is inconsistent with Articles 16.1 and 22.3 of the TRIPS 
Agreement.  Article 24.5 sets out a cut-off date di fferent from the one in the Regulation and does not 
provide for the possibility of limiting the trademark owner's right as the Regulation does.  Article 24.4 
                                                      
541 European Communities' response to Panel question No. 145. 
542 European Communities' first written submission, pa ra. 307;  response to Panel question No. 77. 
543 European Communities' first written submission, pa ra. 308;  response to Panel question No. 76. 
544 European Communities' response to Panel question No. 147. 
545 European Communities' rebuttal submission, paras. 308-310; response to Panel question No. 146. 
546 European Communities' response to Panel question No. 76. 
547 European Communities' response to Panel question No. 75;  rebuttal submission, paras. 312-315.  WT/DS290/R 
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 determines the boundaries for alternatives available to Members in the implementation of measures 
relating to GI protection and its link to trademarks.548 
7.592  Brazil argues GIs which are identical to trademarks are likely to create confusion and, 
consequently, may affect the value of trademarks.  Article 16.1 of the TRIPS Agreement provides for 
a right that covers the use of any sign, and not only that of a trademark, which might cause confusion. 
The possibility of coexistence between a tradem ark and a GI is only acceptable in terms of 
Articles 24.5 and 16.1, read in conjunction, which mean  that the use of a GI and the need to protect it 
must not be at the expense of both trademark owne rs and consumers, which may undermine the value 
of a trademark contrary to the "exclusive rights" of a trademark owner under Article 16.1.549   
7.593  Colombia argues that, under the TRIPS Agreement, no form of protection is superior to 
another.  Therefore, the Regulation cannot deny th e right of the trademark owner under Article 16.1 of 
the TRIPS Agreement.  Such denial constitu tes a clear violation of WTO obligations.550 
7.594  Mexico argues that the exclusive right in Article  16.1 of the TRIPS Agreement is severely 
nullified by Article 14(2) of the Regulation as it permits coexistence between a prior registered 
trademark and a later GI.  The European Communities'  explanation that coexistence is not the perfect 
solution is an inadequate justification but a recogni tion of inconsistency.  By ignoring the "first in 
time, first in right" rule, the Regulation not only c ontravenes Article 24.5 of the TRIPS Agreement but 
also a recognized general principle of law.551  
7.595  New Zealand argues that Article 16.1 of the TRIPS Agreement provides for a right against 
"all third parties".  Despite an appearance of c onflict between the rights in Articles 16.1 and 22.2, 
each must be read to the fullest extent permissible without conflicting with the other.  Article 24.5 is a 
provision that resolves conflict by compromising this  exclusivity, but in all other cases, the rights 
provided for in Articles 16.1 and 22.2 must both be upheld.  Article 14(2) of the Regulation excludes 
users of a registered GI from the scope of "all third parties" against whom a trademark owner should be able to exercise rights, and is inconsistent with Article 16.1.
552 
7.596  Chinese Taipei argues that Articles 16.1 and 22.2 of the TRIPS Agreement must be given 
their full scope in a manner that would not cause conflict.  The Regulation creates precisely such a 
conflict, rendering Article 16.1 inu tile, as the right of trademark owne rs under that article is negated 
by coexistence under Article 14(2) of the Regulation.   The result is the creation of a hierarchy in 
which GIs have a superior status than tradem arks, which is not contemplated by the TRIPS 
Agreement.553   
(iii) Consideration by the Panel 
7.597  The Panel will now proceed to examine whether the TRIPS Agreement requires Members to 
make available to trademark owners rights against the use of GIs.  This involves two steps:  first, we 
examine the right of trademark owners provided for in Article 16.1 of the TRIPS Agreement and then 
we continue by examining whether Article 24.5 provides authority to limit that right. 
                                                      
548 Annex C, para. 5. 
549 Annex C, para. 36. 
550 Annex C, para. 102. 
551 Annex C, para. 114. 
552 Annex C, paras. 148-151. 
553 Annex C, para. 178. WT/DS290/R 
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 Article 16.1 of the TRIPS Agreement
 
7.598  Part II of the TRIPS Agreement contains mi nimum standards concerning the availability, 
scope and use of intellectual property rights.  The first seven Sections contain standards relating to 
categories of intellectual property rights.  Each Section sets out, as a minimum, the subject matter 
which is eligible for protection, the scope of the rights conferred by the relevant category of 
intellectual property and permitted exceptions to those rights.   
7.599  Although each of the Sections in Part II provides for a different category of intellectual 
property, at times they refer to one another554, as certain subject matter may be eligible for protection 
by more than one category of intellectual property.   This is particularly apparent in the case of 
trademarks and GIs, both of which are, in general terms, forms of distinctive signs.  The potential for 
overlap is expressly confirmed by Articles 22.3 and 23.2, which provide  for the refusal or invalidation 
of the registration of a trademark which contains or consists of a GI.555   
7.600  Section 2 of Part II provides for the categor y of trademarks.  Article 15.1 sets out the 
definition of the subject matter which is capable of constituting a trademark.  These are signs that 
satisfy certain criteria.  Article 16.1 sets out a right which must be conferred on the owner of a 
registered trademark, and which may also be acquired on the basis of use, as follows:  
"1. The owner of a registered trademark sh all 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 regi stered where such use would result in a 
likelihood of confusion.  In case of the use of an identical sign for identical goods or 
services, a likelihood of confusion shall be presumed.  The rights described above 
shall not prejudice any existing prior rights, nor shall they affect the possibility of 
Members making rights available on the basis of use." 
7.601  The right which must be conferred on the owner of a registered trademark is set out in the 
first sentence of the text.  There are certain limitations  on that right which relate to use in the course of 
trade, the signs, the goods or services for which the signs are used and those with respect to which 
they are registered and the likelihood of confusion.  The ordinary meaning of the text indicates that, basically, this right applies to use in the course of  trade of identical or similar signs, on identical or 
similar goods, where such use would result in a lik elihood of confusion.  It does not specifically 
exclude use of signs protected as GIs.   
7.602  The text of Article 16.1 stipulates that the right  for which it provides is an "exclusive" right.  
This must signify more than the fact that it is a ri ght to "exclude" others, since that notion is already 
captured in the use of the word "prevent".  Rather, it indicates that this right belongs to the owner of 
the registered trademark alone, who may exercise it to  prevent certain uses by "all third parties" not 
having the owner's consent.  The last sentence provid es for an exception to that right, which is that it 
shall not prejudice any existing prior rights.  Othe rwise, the text of Article 16.1 is unqualified. 
7.603  Other exceptions to the right under Article 16. 1 are provided for in Article 17 and possibly 
elsewhere in the TRIPS Agreement.  However, ther e is no implied limitation vis-à-vis GIs in the text 
of Article 16.1 on the exclusive right which Me mbers must make available to the owner of a 
registered trademark.  That right may be exercised  against a third party not having the owner's consent 
                                                     
 
554 For instance, Article 25.2 of the TRIPS Agreement refers to more than one category of intellectual 
property, as does Article 4 of the IPIC Treaty as inco rporated by Article 35 of  the TRIPS Agreement.   
555 Articles 22.3 and 23.2, respectively.    WT/DS290/R 
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 on the same terms, whether or not the third part y uses the sign in accordance with GI protection, 
subject to any applicable exception.   
Article 24.5 of the TRIPS Agreement  
7.604  The parties have referred to Article 24.5 of the TRIPS Agreement.  This appears in Section 3 
of Part II, which provides for the category of GIs.556  Article 24.5 provides as follows: 
"5. Where a trademark has been applied for or registered in good faith, or where 
rights to a trademark have been acquired through use in good faith either: 
(a) before the date of application of these provisions in that 
Member as defined in Part VI;  or 
(b) before the geographical indication is protected in its country 
of origin;   
measures adopted to implement this Secti on shall not prejudice eligibility for or the 
validity of the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication." 
7.605  The Panel must interpret this provision, like a ll other provisions of the covered agreements 
relevant to this dispute, in accordance with the customary rules of interpretation of public 
international law, as required by Article 3.2 of th e DSU.  For present purposes, this means the general 
rule of treaty interpretation contained in Article 31 of the Vienna Convention on the Law of Treaties.  
This requires an interpretation in good faith in acco rdance with the ordinary meaning to be given to 
the terms in their context and in the light of th e object and purpose of the agreement.  Recourse may 
be had to supplementary means of interpretation in accordance with Article 32 of that Convention.
557   
7.606  Commencing with the terms of the provision, we observe that Article 24.5 consists of a single 
sentence, of which the subject is "measures adopted to implement this Section".  Article 24.5 appears 
in Section 3 of Part II of the TRIPS Agreement.  Therefore, the reference to "this Section" is a 
reference to Section 3.   
7.607  The principal verb in Article 24. 5 is "shall not prejudice".  Ther e are various definitions of the 
verb "prejudice" used in the three authentic  language versions of  the TRIPS Agreement.558  The 
ordinary meaning of the verb "prejudice" in E nglish can be defined as "affect adversely or 
unfavourably;  injure or impair the validity of (a righ t, claim, etc.)".  The latter part of this definition 
appears particularly apposite in this context since it  refers to a right or claim, and the objects of the 
verb in Article 24.5 are legal rights.  However, the European Communities emphasizes that the verbs 
used in the French and Spanish versions, préjuger and prejuzgar  respectively, correspond to the 
modern English verb "prejudge".  The Panel notes that  this is an archaic sense of the English verb 
"prejudice" now analogous to its use in the phrase "w ithout prejudice".  Other usages of the English 
verb "prejudice" in the TRIPS Agreement outside Ar ticle 24 have been rendered differently in the 
                                                      
556 Section 3 of Part II consists of three articles:  Articles 22, 23 and 24.  Article 23 concerns only GIs 
for wines and spirits, which are not covered by the Regulation.  Nevertheless, the meaning of that article is 
important in understanding Section 3 in general and Article 24 in particular.  The Panel therefore refers to it in 
its examination, where that is helpful. 
557 See, for example, the Appellate Body report on US – Gasoline , DSR 1996:I, 3, at 16;  Appellate 
Body report on Japan – Alcoholic Beverages II ,  DSR 1996:I, 97, at 104;  and Appellate Body report on India – 
Patents (US) , paras. 45-46. 
558 The New Shorter Oxford English Dictionary (1993);  Le Nouveau Petit Robert: Dictionnaire de la 
langue française (June 2000) and Diccionario de la Lengua Española , 21st edition, (1992). WT/DS290/R 
Page 136  
 
 French and Spanish versions , which are equally authentic
559, to capture the sense of adverse effect or 
injury, so that that sense should not be read into Article 24.5.  Nevertheless, the essence of all these 
definitions is that the provision does not affect certain other rights.  The Panel's task in this dispute is to determine the applicability of Article 24.5.  For that purpose, it suffices to note that the verb "shall 
not prejudice" denotes that the measures that are the subject of that provision shall not affect certain 
other rights.   
7.608  The Panel notes that the word "prejudice" is relatively common in all three versions of the 
TRIPS Agreement and the phrase "shall not prejudice " or "shall in no way prejudice" occurs three 
other times in the English version, including once in another exception in Article 24, and once in 
relation to prior rights in Article 16.1 itself.
560  Read in context, "prejudice" simply appears to be a 
word which the drafters used to indicate that a par ticular measure shall not affect certain other rights, 
including prior rights. 
7.609  The objects of the principal verb in Article 24.5 are "the eligibility for or the validity of the 
registration of a trademark" and "the right to use a trademark".  The context indicates the relevance of these rights in Article 24.5.  The choice of words "the  eligibility for or the validity of the registration 
of a trademark" reflects the fact that these are the aspects of trademark protection which might 
otherwise be prejudiced by the obligations to "refu se or invalidate the registration of a trademark" and 
that "registration of a trademark ... shall be refused or invalidated" in Articles 22.3 and 23.2.  In the 
same way, the choice of the words "the right to use a trademark" reflects the fact that this is the aspect 
of trademark protection which would otherwise be pr ejudiced by the obligations to provide the legal 
means to prevent certain uses in Articles 22.2 and 23.1.
 561 
7.610  The European Communities asserts that the words "the right to use a trademark" provide for 
an additional positive right to use a trademark.  Ho wever, in the Panel's view, the verb "shall not 
prejudice" is not capable of supporting this interpreta tion.  It does not provide for the conferral of new 
rights on trademark owners or GI holders, but provides that the specifically mentioned rights shall not be affected by the measures that are the subject of the provision.  If the drafters had intended to grant 
a positive right, they would have used positive lang uage.  Indeed, Article 14(2) of the Regulation 
(which was adopted prior to the end of the TRI PS negotiations) expressly provides that "a trademark 
... may continue to be used"  under certain conditions.  In contrast, th ere is no language in Article 24.5 
of the TRIPS Agreement which would provide for the c onferral of a right to use a trademark.  Instead, 
it is a saving provision which ensures that "the right to use a trademark" is not prejudiced, or affected, 
                                                     
 
559 See the final clause of the WTO Agreement. 
560 The phrase "shall in no way prejudice" appears in all three versions in Article 24.8, and "shall not 
prejudice" appears in Articles 16.1 and 53.2 in the English version.  The phrase "without prejudice" appears in 
Articles 10.2, 40.3, 50.6, 57 and 59, an d the word "prejudice" appears in th e exception clauses in Articles 13, 
26.2 and 30 (and Article 27.2 in the English version), and also in Article 63.4. 
561 The order of these two exceptions in Article 24.5  reverses the order of the types of protection in 
relation to uses and in relation to registration of a trademark in Article 22.2 and 22.3 and in Article 23.1 and 
23.2.  However, it can be observed that the exceptions fo llowed the same order as th e corresponding rights in 
paragraphs 1 and 2 of the GI exceptions provision in the Brussels Draft, which were the predecessors of 
Article 24.4 and 24.5 in the final version.  Draft paragraph 1 referred to a GI that had been "used", "including 
use as a trademark", and draft paragraph 2 only referred to "action to refuse or invalidate registration of a trademark":  see document MTN.TNC/W/35/Rev.1 dated 3 December 1990 entitled "Draft Final Act 
Embodying the Results of the Uruguay Round of Multilat eral Trade Negotiations – Revision", the so-called 
"Brussels Draft".  The phrase "including use as a trademark" was later deleted from paragraph 1 and prior trademark issues, including the right to use a trademark, we re dealt with in Article 24.5 in the final version, in 
that order.   WT/DS290/R 
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 by measures adopted to implement Section 3 of Pa rt II.  Irrespective of how the right to use a 
trademark arises, there is no obligation under Article 24.5 to confer it.562   
7.611  Even if the TRIPS Agreement does not expressly provide for a "right to use a trademark" 
elsewhere, this does not mean that a provision that measures "shall not prejudice" that right provides for it instead.  The right to use a trademark is a right that Members may provide under national law.
563  
This is the right saved by Article 24.5 where it provides that certain measures "shall not prejudice ... 
the right to use a trademark".564   
7.612  The context in other paragraphs of Article 24 confirms the Panel's interpretation of "the 
eligibility for or the validity of the registration of a trademark" and "the right to use a trademark", as used in paragraph 5.  Other exceptions in that artic le also refer to the implications of these two types 
of protection.  Paragraph 4 re fers to "continued and similar use of a particular [GI] ... identifying 
wines and spirits";  paragraph 7 refers to "any re quest made under this Section in connection with the 
use or registration of a trademark ";  and paragraph 8 refers to  "the right of any person to use, in the 
course of trade, that person's name".  
7.613  There is no reason to limit the "right to use a trademark" to tradem arks acquired through use 
due to the optical symmetry between, on the one hand, the passive subjects of the first relative clause:  
"a trademark applied for ... in good faith", "a trad emark ... registered in good faith" and "rights to a 
trademark ... acquired through use in good faith" a nd, on the other hand, the active objects of the 
principal verb: "eligibility for ... the registration of a trademark", "the validity of the registration of a 
trademark" and "the right to use a trademark".  The operative parallel is between the rights which 
shall not be prejudiced and the types of GI protection which would otherwise prejudice them. 
7.614  Therefore, according to their ordinary mean ing read in context, the terms "shall not 
prejudice", "the eligibility for or the validity of the registration of a trademark" and "the right to use a trademark" as used in paragraph 5 of Article 24 i ndicate the creation of exceptions to the obligations 
to provide two types of GI protection in Section 3.  Both these types of protection could otherwise 
affect the rights identified in paragraph 5.  Indeed , the refusal or invalidation of the registration of a 
trademark has no other function but to extinguish the eligibility for or the validity of the registration 
of a trademark.  Paragraph 5 ensures that each of these  types of protection shall not affect those rights.  
7.615  Accordingly, the Panel considers that Article 24. 5 creates an exception to GI protection - as 
reflected in the title of Article 24. 
                                                     
 
562 The European Communities' raises the issue of a Member that provides additional GI protection 
beyond that which is required by Article 22, in suppor t of its view that Article 24.5 imposes self-standing 
obligations.  It argues that in this situation Article 24.5, not Article 22 nor Section 2, would prohibit that 
Member from invalidating or denying protection to prior tr ademarks inconsistent with that additional protection.  
See the European Communities' response to Panel question  No. 145.  In the Panel's view, this overlooks the 
subject of Article 24.5 which is "meas ures adopted to implement ... Section [3 ]".  To the extent that measures 
implement GI protection beyond that which is required by Article 22 for products other than wines and spirits 
they are, by definition, not measures adopted to implemen t Section 3 and Article 24.5 is irrelevant to them.  It 
has not been argued by any party that the Regulation is not such a measure.   
563 This is confirmed in WIPO publications, including Introduction to Trademark Law & Practice, The 
Basic Concepts, A WIPO Training Manual (1993), pp. 51-52, and WIPO Intellectual Property Handbook:  
Policy, Law and Use , (June 2001) at p. 82, cited by the European Communities' in its rebuttal submission, 
para. 324 and its response to Panel question No. 76.  See, for example, Australia's Trade Marks Act 1995, 
Section 20(1)(a), reproduced in Exhibit EC-58.  
564 Article 16.1 of the TRIPS Agreement only provides  for a negative right to prevent all third parties 
from using signs in certain circumstances.  Article 15.3 permits Members to make registrability depend on use 
and Article 19.1 permits Members to require use in order to maintain a registration, which might imply a right to use the trademark, but any su ch right is subject to the general law.  Article 20 does not preclude a requirement 
prescribing the use of a trademark in a certain way.   WT/DS290/R 
Page 138  
 
 7.616  Both parties submit that Article 24.5 implies ce rtain things.  Australia argues that the term 
"validity of the registration" impliedly refers to all the rights which flow from registration, including 
the right to prevent uses that would result in a lik elihood of confusion.  In contrast, the European 
Communities argues that the use of the more specific language in Ar ticle 24.5 in fact implies a 
limitation on the trademark owner's right to exclude use.
565   
7.617  As to Australia's argument, the Panel notes the contrast between the use of the specific terms 
"eligibility for or the validity of the registration" in  Article 24.5, rather than simply "existing prior 
rights", which is the language used in the last sente nce of Article 16.1.  The use of language such as 
"existing prior rights" would have clearly preserved the right to prevent certain uses without any need 
for implication.  The more specific language u sed in Article 24.5 does not, which suggests that 
Article 24.5 does not impliedly preserve that right.  However, this does not mean that Article 24.5 
authorizes Members to prejudice that right.  Members may prejudice that right if there is another provision that obliges or permits them to do so.   
7.618  As to the European Communities' argument, the Panel considers that it is difficult to sustain 
an argument that a limitation which is allegedly implied can prevail over an obligation in a WTO 
covered agreement which is express.  It is ev idently the position under the European Communities' 
domestic law that an implied positive right to use a re gistered GI prevails over the negative right of a 
prior trademark holder to prevent confusing uses.
566  However, such an interpretation of the TRIPS 
Agreement is not possible without a suitable basis in the treaty text.  The text of Article 24.5 expressly 
preserves the right to use a trademark - which is not expressly provided for in the TRIPS Agreement – 
and is silent as to any limitation on the trademark ow ner's exclusive right to prevent confusing uses of 
signs - which is expressly provided for in the TRIPS Agreemen t – when the sign is used as a GI.   
7.619  Accordingly, the Panel's preliminary conclusi on is that it is inappropriate to imply in 
Article 24.5 either the right to prevent confusing uses or a limitation on the right to prevent confusing 
uses.  
7.620  The ordinary meaning of the terms in their context must also be interpreted in light of the 
object and purpose of the agreement.  The object an d purpose of the TRIPS Agreement, as indicated 
by Articles 9 through 62 and 70 and reflected in th e preamble, includes the provision of adequate 
standards and principles concerning the availability , scope, use and enforcement of trade-related 
intellectual property rights.  This confirms that a limitation on the standards for trademark or GI 
protection should not be implied unless it is supported by the text.   
7.621  The standards of protection in Part II of the Agreement and, hence, the procedures for their 
enforcement under Part III, could be undermined by systematic conflicts between the standards for 
different categories of intellectual property availabl e to different parties but applied to the same 
subject matter.  This is particularly apparent in th e case of trademarks and GIs due to the similarity of 
the subject matter eligible for protection by those two categories of intellectual property and the fact 
that the rights in respect of uses are indifferent as to whether the infringing subject matter is protected 
by another category of intellectual property.  The subject matter eligible for protection overlaps whilst 
the rights conferred by each category intersect. 
                                                      
565 European Communities' first written submission, para. 301;  response to Panel question No. 147. 
566 That position may be evidenced by, among other things, the express provision in the Community 
Trademark Regulation that it shall not affect the GI Regulati on and, in particular, Article 14 thereof.  There is no 
such provision in Section 2 of Part II of the TRIPS Agre ement on trademarks that refers  to Section 3 of Part II 
on GIs.  WT/DS290/R 
 Page 139 
 
 
 7.622  The European Communities submits that this is a conflict resolved by Article 22.3 (and 23.2) 
by effectively giving priority to the GI.567  The Panel agrees that Article 22.3 and Article 23.2 can 
resolve conflicts with later trademarks but they do not resolve conflicts with prior trademarks that 
meet the conditions set out in Article 24.5. 
7.623  The European Communities notes that the simulta neous exercise of two negative rights to 
prevent uses provided for in Articles 16.1 and 22.2 (a nd 23.1) can lead to a conflict between different 
private parties who wish to use an individual sign as a trademark and as a GI.  It sees this potential for 
conflict as a matter which should be avoided in th e interpretation of the TRIPS Agreement.   
7.624  The Panel notes that the parties do not dispute that Members may comply simultaneously with 
both obligations in the TRIPS Agreement.  They do not  allege that there are conflicting provisions in 
the treaty itself.568  The general rule of treaty interpretati on requires us to interpret the treaty in 
accordance with the ordinary meaning to be given to its  terms in their context in the light of its object 
and purpose.  The Panel has had recourse to supplemen tary means of interpretation, in particular a 
draft text, in order to confirm the meaning resulting from the application of the general rule of treaty 
interpretation, which has not left the meaning ambi guous or obscure or led to a result which is 
manifestly absurd or unreasonable.  We would not  adopt an approach in treaty interpretation that 
produced a result that might, on one view, further the object and purpose of the Agreement, but which is not supported by the ordinary meaning to be gi ven to its terms in their context.  The following 
statement by the Appellate Body in EC – Hormones  appears apposite:   
"The fundamental rule of treaty interpretati on requires a treaty interpreter to read and 
interpret the words actually used by the ag reement under examination, not words the 
interpreter may feel should have been used."
569 
7.625  Therefore, the Panel concludes that, under Ar ticle 16.1 of the TRIPS Agreement, Members 
are required to make available to trademark owners a right against certain uses, including uses as a GI.  
The Regulation limits the availability of that ri ght for the owners of trademarks subject to 
Article 14(2).  Article 24.5 of the TRIPS Agreement is inapplicable and does not provide authority to 
limit that right.   
7.626  The European Communities raises two other defen ces that, in this respect, the Regulation is 
justified by exceptions found in Articles 24.3 and 17 of the TRIPS Agreement.  The Panel will 
consider each of these in turn. 
(e) Article 24.3 of the TRIPS Agreement 
(i) Main arguments of the parties 
7.627  Australia argues that Article 24.3 of the TRIPS Agreement refers to the protection provided 
by Article 13 of the Regulation, which is subject to the exception in Article 14(2).  Removal of the 
coexistence standard in Article 14(2) of the Regula tion would not diminish that protection.  Further, 
Article 24.3 encompasses protection for individual GIs as of 31 December 1994.  As of that date, 
there were no GIs registered under the Regulation, but only GIs registered under the laws of the EC 
                                                      
567 European Communities' response to Panel question No. 146. 
568 In this respect, the Panel recalls the findings in the Panel reports on Indonesia – Autos  at para 14.28;  
Turkey – Textiles at paras. 9.92-9.95;  and EC – Bananas III at paras. 7.151-7.163.  
569 Appellate Body report on EC – Hormones , para. 181.   WT/DS290/R 
Page 140  
 
 member States.  Finally, Article 24.3 relates only to the implementation of Section 3 and not the 
trademark right under Article 16.1 of the TRIPS Agreement.
570 
7.628  The European Communities argues that it is required to maintain coexistence of GIs and 
earlier trademarks by Article 24.3 of the TRIPS Ag reement, which is a standstill obligation that 
prohibits Members from diminishing the level of GI protection that existed at the time of entry into 
force of the WTO Agreement.  The Regulation provid ed for coexistence in Article 14(2) immediately 
prior to the entry into force of the WTO Agre ement.  If the European Communities allowed the 
owners of prior registered trademarks to preven t the use of later GIs, this would diminish the 
protection of GIs contrary to Article 24.3.571  The standstill obligation applies to the general level of 
protection of GIs available in a Member on 1 Janua ry 1995 rather than the protection of individual 
GIs registered or applied for on that date.  The rele vant verb, "existed", appears in the singular in the 
French and Spanish versions, which indicates that  it refers to the whole phrase "protection of 
geographical indications" rather than the plural noun "geographical indications".  It is an additional 
obligation, not an exception.  It refers to GI pr otection, which expressly includes protection vis-à-vis 
trademark rights in Articles 22.3, 23.2 and 24.5.  Those provisions limit the trademark obligations 
under Article 16.1, as does Article 24.3.572  Article 24.3 applies "[i]n im plementing this Section".  The 
Section includes Article 24.5, which prevents Me mbers from invalidating and prohibiting the use of 
grandfathered trademarks.573   
(ii) Main arguments of third parties 
7.629  New Zealand informs the Panel that no GIs were registered under the Regulation prior to the 
entry into force of the TRIPS Agreement.  In an y case, Article 24.3 is qualified by the phrase "[i]n 
implementing this Section" and does not jus tify a breach of the Section on trademarks.574   
(iii) Consideration by the Panel 
7.630  The Panel now considers the European Communitie s' argument that it is required to maintain 
coexistence of GIs and earlier trademarks by Article  24.3 of the TRIPS Agreement.  That provision 
reads as follows: 
"3. In implementing this Section, a Member shall not diminish the protection of 
geographical indications that existed in that  Member immediately prior to the date of 
entry into force of the WTO Agreement." 
7.631  Article 24.3 appears in Section 3 of Part II of the TRIPS Agreement.  The reference to "this 
Section" is therefore a reference to Section 3, whic h sets out standards for the protection of GIs.  The 
"date of entry into force of the WTO Agreement" was 1 January 1995. 
7.632  The scope of Article 24.3 is limited by the introductory phrase "[i]n implementing this 
Section".  It does not apply to measures adopted  to implement provisions outside Section 3.  
Trademark owners' rights, which Members must  make available in the implementation of 
Article 16.1, are found in Section 2.  Therefore, Article 24.3 is inapplicable. 
7.633  Turning to the ordinary meaning of the terms u sed in the rest of the provision, the principal 
verb is "shall not diminish".  This indicates that th is is a standstill provision, and that it is mandatory.  
                                                      
570 Australia's rebuttal submission, paras. 111- 117;  second oral statement, para. 27. 
571 European Communities' first written submission, paras. 272, 312-314. 
572 European Communities' response to Panel question No. 74. 
573 European Communities' response to Panel question No. 152. 
574 Annex C, para. 158.  WT/DS290/R 
 Page 141 
 
 
 The parties do not agree on the meaning of the object of that verb, which is the phrase "the protection 
of geographical indications" as qualified by the final relative clause.  In the English version of the 
text, that phrase could refer either to "the protectio n of GIs" as a whole, or to "the protection" of 
individual GIs.  In the French and Span ish versions, which are equally authentic575, the verb "existed" 
in the relative clause is in the singular, whic h indicates that the "protection of geographical 
indications" must be interpreted as a whole.  It is uncl ear in all three versions whether this refers to the 
legal framework or system of protection in a Memb er that existed immediately prior to 1 January 
1995, or to the state of GI protection in a Member th at existed at that time in terms of the individual 
rights which were protected. 
7.634  If Article 24.3 referred to a system of protecti on in a Member, this w ould have two important 
consequences.  First, as a mandatory provision, it would prevent a Member which had a system that 
granted a higher level of protection than th at provided for in the TRIPS Agreement from 
implementing the same minimum standards of protection as other Members, even if it wished to do so.  For example, in the European Communities, Ar ticle 14 of the Regulation entered into force in 
1993 but was amended in April 2003 in respect of trademark rights acquired through use.
576  To the 
extent that those amendments diminished the gene ral level of protection of GIs under the European 
Communities' system, they would be incons istent with Article 24.3 on its own view. 
7.635  Second, a standstill provision for a system of  protection would exclude from the scope of 
Section 3 not only individual rights already in force unde r that system as at the date of entry into force 
of the WTO Agreement, but also ri ghts subsequently granted under that system in perpetuity.  This 
would be a sweeping exclusion which would grow, rather than diminish, in importance, as an 
increasing number of GIs were protected under the pr ior legislation.  The Panel is reluctant to find 
such an exclusion in the absence of any clear language  to that effect, and none has been drawn to its 
attention.  In this respect, it can be noted that the TRIPS Agreement does contain an exclusion for a 
type of system (in respect of phonograms) in Artic le 14.4 but it is optional, it clearly refers to a 
"system" and it is subject to a proviso against a buse.  Article 24.3 contains none of these features. 
7.636  For these reasons, the Panel interprets the phrase "the protection of geographical indications 
that existed in that Member immediately prior to th e date of entry into force of the WTO Agreement" 
to mean the state of protection of GIs immediately prior to 1 January 1995, in terms of the individual GIs which were protected at that point in time.  In the present dispute, the parties agree that no GIs 
were registered under the Regulation prior to 1 January  1995.  Therefore, Article 24.3 is inapplicable. 
7.637  For all the reasons set out above, the Panel c oncludes that Article 24.3 is inapplicable. 
(f) Article 17 of the TRIPS Agreement 
(i) Main arguments of the parties 
7.638  Australia argues that the European Co mmunities has not met its burden of proof to establish 
that the conditions of Article 17 of the TRIPS Agreem ent are fulfilled.  Austra lia interprets "limited 
exception" to mean small diminutions to trademark rights.  Article 14(2) of the Regulation is not a 
"limited exception" because it allo ws coexistence with a pre-existing trademark in every case in which 
a GI is registered.  If Article 17 covered this situ ation it would render Article 24.5 meaningless.  Fair 
use of descriptive terms does not include use of all de scriptive terms, but only such use as is fair.  Use 
of a term in a way with a signifying function, rath er than a purely descriptive function, is not "fair 
use".  If a GI was purely descriptive, there would be no need or basis for  an intellectual property right 
                                                     
 
575 See the final clause of the WTO Agreement. 
576 See Council Regulation (EC) No. 692/2003, Article 13, and paragraph 11 of the recitals, set out in 
Exhibit COMP-1h. WT/DS290/R 
Page 142  
 
 and thus, for Section 3 of Part II of the TRIPS Ag reement.  A trademark does not attract the same 
spectrum of rights as other categories of intellectua l property:  it attracts only one right, to prevent 
uses which result in a likelihood of confusion.
577   
7.639  Article 14(2) does not take account of the legitim ate interests of the owner of the trademark 
because it denies the exclusive right to prevent c onfusingly similar or identical use required by 
Article 16.1 of the TRIPS Agreement.  A legitimat e interest of the owner is to maintain the 
trademark's capacity to distinguish the owner's goods .  Article 17 only permits a small diminution of 
the capacity to distinguish.  The third parties woul d normally include consumers and other traders.  
Consumers have a legitimate interest in being able to purchase products which they intended to 
purchase.  Other traders have a legitimate inte rest in being able to use signs that they need to use .  For 
this reason, Article 17 gives the example of fair use of descriptive terms.  Having regard to the text of 
Article 17 and the design and architecture of the TRIPS Agreement generally, Article 17 does not 
permit a general release from a Member's obligation to grant the basic right attached to a registered trademark in the event of acquisition of another type of intellectual property right without some 
express recognition of that fact.
578 
7.640  The European Communities argues that, in the alternative, the coexistence of GIs and earlier 
trademarks would be justified under Article 17 of the TRIPS Agreement.  It considers that Article 17 
is an exception to the obligations in Article 16 and that previous panels have  taken the view that the 
burden of invoking similar exceptions was on the r espondent.  It accepts that it bears the burden of 
proof.  Article 14(2) of the Regulation is a "limit ed exception" because it only allows use by those 
producers who are established in the geographical area on products that comply with the specification.  
The trademark owner retains the exclusive right to  prevent use by any other persons.  Coexistence 
falls within the example of "fair use of descriptiv e terms" because GIs are descriptive terms, even 
where they consist of a non-geographical name, and th eir use to indicate the true origin of goods and 
the characteristic associated with that origin is "fair".579   
7.641  The European Communities argues th at the legitimate interests of the trademark owner and of 
third parties are taken into account because Article 14(3) of the Regulation would prevent the most 
significant cases of confusion, and legislation on  labelling, misleading advertising and unfair 
competition still applies.  The legitimate interests of the trademark owner are less than full enjoyment 
of all exclusive rights under Article 16.1 of the TRI PS Agreement.  The legitimate interests of third 
parties include the interests of producers who use GIs as well as consumers.  GIs inform consumers about the origin of products  and take account of the interests of thir d parties in that way.  Article 17 of 
the TRIPS Agreement does not require the avoidan ce of all likelihood of confusion, otherwise it 
would be superfluous, nor does it require  confusion to be confined to that which is strictly necessary, 
which would render the example of "fair use of de scriptive term" irrelevant.  Article 17 calls for a 
balancing of different interests which, in the presen t dispute, requires that account should be taken of 
the fact that trademarks are arbitrary and much e asier to create than GIs and GIs are collective rights 
and also serve a public interest of informing consumers.
580 
(ii) Main arguments of third parties 
7.642  Argentina , Brazil , India , Mexico  and New Zealand indicated, in response to a question 
from the Panel, that they provide certain exceptions  to exclusive trademark rights.  Examples included 
                                                      
577 Australia's rebuttal submission, paras. 120-124; responses to Panel question Nos. 154-156. 
578 Australia's rebuttal submission, paras. 125-127;  response to Panel question No. 154. 
579 European Communities' first written submission, paras. 315-318;  rebuttal submission, 
paras. 333-338, 348-350;  responses to Panel question No. 75(b). 
580 European Communities' first written submission, pa ra. 319;  rebuttal submission, paras. 339-347; 
responses to Panel questions Nos. 153 and 154;  comment on US response to Panel question No. 154.  WT/DS290/R 
 Page 143 
 
 
 honest concurrent use, prior use in good faith, co mparative advertising, uses for spare parts and 
certain non-commercial fair uses.581 
7.643  New Zealand also argues that coexistence is not a " limited" exception within the meaning of 
Article 17 of the TRIPS Agreement because it ex cludes an entire group of producers from the 
trademark owner's right to prevent confusing uses, which is a major exception.582 
(iii) Consideration by the Panel 
Introduction  
7.644  The Panel will now consider the European Commun ities' argument that its particular regime 
of coexistence between GIs and prior trademar ks is justified under Ar ticle 17 of the TRIPS 
Agreement.  The European Communities defends its re gime of coexistence "as such", not as applied.  
Therefore, our consideration of this defence focu ses almost entirely on the terms of the measure and 
its potential effects, rather than any actual effects.  Nevertheless, we will refer to the few examples of 
how the GI Regulation has been applied with respect to prior trademarks, where that is instructive. 
7.645  Australia submits that the European Communiti es, as the party asserting that its measure is 
covered by the exception in Article 17, bears the burden of proving that assertion.  The European 
Communities does not contest this position.583  Therefore, the Panel will follow this approach in the 
present dispute. 
7.646  Article 17 provides as follows:  
"Exceptions 
Members may provide limited exceptions to th e rights conferred by a trademark, such 
as fair use of descriptive terms, provided that such exceptions take account of the 
legitimate interests of the owner of the trademark and of third parties." 
7.647  Article 17 expressly permits Members to provide limited exceptions to th e rights conferred by 
a trademark, which include the right provided for in  Article 16.1 of the TRIPS Agreement.  The Panel 
has already found that the Regulation limits the availability of the right  provided for in Article 16.1.  
Therefore, to the extent that it satisfies the conditio ns in Article 17, this limitation will be permitted 
under the TRIPS Agreement.  
                                                      
581 See their respective comments in Annex C. 
582 Annex C, para. 159. 
583 All parties note that it was the approach of two prev ious panels to exceptions provisions in Part II of 
the TRIPS Agreement: see Panel reports on US – Section 110(5) Copyright Act , para. 6.239; and Canada – 
Pharmaceutical Patents , para. 7.16.  This approach was not contested in those disputes and was adopted without 
discussion, although the Panel in Canada – Pharmaceuticals  observed that a respondent cannot demonstrate that 
no legitimate interest of a patent owner has been prejudiced until it knows what claims of legitimate interests can be made by the complainant.  Similarly, the weight of legitimate third party interests cannot be fully 
appraised until the legitimacy of the patent owner's legitimate  interests, if any, are defined:  see para. 7.60 of its 
report.  These practical problems also apply in disputes under Article 17.  In this regard, the Panel recalls the 
distinction between the rights and obligations owed by WTO Members to one another under the covered 
agreements, and the rights conferred by Members on nationals by individual intellectual property rights under 
the TRIPS Agreement.  The burden of proof in WTO dispute settlement between Members relates to the first set of rights and obligations and not to the fact that a provision creates exceptions to the rights to be conferred by 
Members on the nationals of other Members.   WT/DS290/R 
Page 144  
 
 7.648  Article 17 permits "limited exceptions ".  It provides an example of a limited exception, and is 
subject to a proviso that "such exceptions take accoun t of the legitimate interests of the owner of the 
trademark and of third parties".  The ordinary mean ing of the terms indicates that an exception must 
not only be "limited" but must also comply with the proviso in order to satisfy Article 17.  The 
example of "fair use of descriptive terms" is illustrative only, but it can provide interpretative 
guidance because, a priori , it falls within the meaning of a "limit ed" exception and must be capable of 
satisfying the proviso in some circumstances.  Any interpretation of the term "limited" or of the proviso which excluded the example would be manifestly incorrect.   
7.649  The structure of Article 17 differs from that of other exceptions provisions to which the 
parties refer.  It can be noted that Articles 13,  26.2 and 30 of the TRIPS Agreement, as well as 
Article 9(2) of the Berne Convention (1971) as incor porated by Article 9.1 of the TRIPS Agreement, 
also permit exceptions to intellectual property right s and all contain, to varying degrees, similar 
language to Article 17.  However, unlike these othe r provisions, Article 17 c ontains no reference to 
"conflict with a [or the] normal exploitation", no  reference to "unreasonabl[e] prejudice" to the 
legitimate interests" of the right holder or owner, and it not only refers to the legitimate interests of 
third parties but treats them on par with those of the right holder.  It is also the only one of these 
provisions which contains an example.  Further, Article 17 permits exceptions to trademark rights, 
which differ from each of the intellectual propert y rights to which these other exceptions apply.  
Therefore, whilst it is instructive to refer to the inte rpretation by two previous panels of certain shared 
elements found in Articles 13 and 30, it is important to interpret Article 17 according to its own terms. 
Limited exceptions
 
7.650  The first issue to decide is the meaning of the term "limited exceptions" as used in Article 17.  
Australia interprets this in terms of a small dimi nution of rights.  The European Communities does not 
disagree with this approach.  The Panel agrees with the views of the Panel in Canada – 
Pharmaceutical Patents , which interpreted the identical term in Article 30, that "[t]he word 
'exception' by itself connotes a limited derogation, one that does not undercut the body of rules from 
which it is made".584  The addition of the word "limited" emphasizes that the exception must be 
narrow and permit only a small diminution of rights.  The limited exceptions apply "to the rights conferred by a trademark".  They do not apply to th e set of all trademarks or all trademark owners.  
Accordingly, the fact that it may affect only few tr ademarks or few trademark owners is irrelevant to 
the question whether an exception is limited.  The issue is whether the exception to the rights 
conferred by a trademark is narrow.   
7.651  There is only one right conferred by a trademark at issue in this dispute, namely the exclusive 
right to prevent certain uses of a sign provided for in Article 16.1.  Th erefore, it is necessary to 
examine the exception on an individua l "per right" basis.  This is a legal assessment of the extent to 
which the exception curtails that right.  There is no indication in the text of Article 17 that this 
involves an economic assessment, although economic imp act can be taken into account in the proviso.  
In this regard, the Panel notes the absence of any re ference to a "normal exploitation" of the trademark 
in Article 17, and the absence of any reference in S ection 2, to which Article 17 permits exceptions, to 
rights to exclude legitimate competition.  Rather, they confer, inter alia , the right to prevent uses that 
would result in a likelihood of confusion, which can  lead to the removal of products from sale where 
they are marketed using particular signs, but without otherwise restraining the manufacture, sale or import of competing goods or services. 
7.652  The right provided for in Article 16.1 contains  several elements and an exception could, in 
principle, curtail the right in respect of any of them .  The Panel recalls these elements in the text of 
that provision as follows: 
                                                     
 
584 Panel report on Canada – Pharmaceutical Patents, para. 7.30.  WT/DS290/R 
 Page 145 
 
 
 "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 re gistered where such use would result in a 
likelihood of confusion ."  [emphasis added] 
7.653  In principle, an exception could curtail the right  of the owner in respect of the third parties 
concerned, or with respect to th e identity or the similarity of the signs or the goods or services 
concerned or with respect to the degree of likeliho od of confusion, or some combination of these.  
There may be other possibilities as well.  The overri ding requirement is that the exception must be 
"limited" and it must also satisfy the proviso, cons idered below.  These elements provide a useful 
framework for an assessment of the extent to which an exception curt ails the right provided for in 
Article 16.1. 
7.654  The example in the text, "fair use of descrip tive terms", provides guidance as to what is 
considered a "limited exception", although it is illu strative only.  Fair use of descriptive terms is 
inherently limited in terms of the sign which may be used and the degree of likelihood of confusion 
which may result from its use, as a purely descriptive  term on its own is not distinctive and is not 
protectable as a trademark.  Fair use of descriptive terms is not limited in terms of the number of third 
parties who may benefit, nor in terms of the quantit y of goods or services with respect to which they 
use the descriptive terms, although implicitly it only applies to those third parties who would use 
those terms in the course of trade and to those g oods or services which those terms describe.  The 
number of trademarks or trademar k owners affected is irrelevant , although implicitly it would only 
affect those marks which can consist of, or include, signs that can be used in a descriptive manner.  
According to the text, this is a "limite d" exception for the purposes of Article 17. 
7.655  Turning to the Regulation, it curtails the trad emark owner's right in respect of certain goods 
but not all goods identical or similar to those in re spect of which the trademark is registered.  It 
prevents the trademark owner from exercising the ri ght to prevent confusing uses of a sign for the 
agricultural product or foodstuff produced in accord ance with the product specification in the GI 
registration.  The Panel recalls th at, according to Article 2(2) of the Regulation, set out above at 
paragraph 7.223, those goods must all be produced, processed and/or prepared in the region, specific 
place or, in exceptional cases, country, the name of wh ich is used to describe them.  Goods that are 
not from that geographical area may not use the GI.  Further, according to Article 4 of the Regulation, all products using a GI must comply with a product specification.  Products that do not so comply 
may not use the GI even if they are from the geogr aphical area.  The trademark owner's right against 
all other goods is not curtailed.  The Panel notes that  there is no limit in terms of the quantity of goods 
which may benefit from the exception, as long as they conform to the product specification.  
However, this cannot prevent the limitation on rights of owners of trademarks subject to Article 14(2) 
from constituting a limited exception for the purposes of  Article 17, as fair use of descriptive terms 
implies no limit in terms of quantity either, and the text indicates that it is a limited exception for the 
purposes of Article 17.  The quantity of goods which benefits from an exception may be related to the 
curtailment of the rights to prevent the acts of making, selling or importing a product, but these are not rights conferred by a trademark. 
7.656  The Regulation curtails the trademark owner's ri ght against certain third parties, but not "all 
third parties".  It prevents the trademark owner from exercising the right to prevent confusing uses 
against persons using a registered GI on a good in accor dance with its registration.  This is a limitation 
on the third parties who may benefit from the exception.   The trademark owner's right is not curtailed 
with respect to any other third parties.   
7.657  The Regulation curtails the trademark owner's right  in respect of certain signs but not all signs 
identical or similar to the one protected as a tr ademark.  It prevents the trademark owner from WT/DS290/R 
Page 146  
 
 exercising its right to prevent use of an indica tion registered as a GI in accordance with its 
registration.  The Panel recalls its finding earlier in  paragraph 7.522 that the GI registration does not 
confer a positive right to use any other signs or co mbinations of signs nor to use the name in any 
linguistic versions not entered in the register.  The trademark owner's right is not curtailed against any 
such uses.  If the GI registration prevented th e trademark owner from exercising its rights against 
these signs, combinations of signs or linguistic ve rsions, which do not appear expressly in the GI 
registration, it would seriously expand the excep tion and undermine the limitations on its scope. 
7.658  Under the Regulation, once a GI has been regi stered and a trademark is subject to the 
coexistence regime under Article 14(2), set out above at  paragraph 7.524, the GI may, in principle, be 
used without regard to the likelihood of confusion that it may cause.  However, the Regulation refers 
to the likelihood or risk of confusion, with a gi ven mark, which would result from use as a GI of an 
identical or similar sign, in Articles 7(5)(b), 12b( 3) and 12d(3) in relation to the decision on whether 
to register a GI where an objection is admissible.  Article 7(4) (and hence Article 12b(3)) provides a ground for objection where registration would jeopard ize the existence of a mark, and Article 14(3) 
provides a ground for refusal of registration which refers to the trademark's reputation and renown 
and the length of time it has been used.  These fa ctors are relevant to the likelihood of confusion 
which could result from subsequent use of the GI.  The Panel recalls its finding in paragraph 7.525 
that Article 14(2) is an exception to Article 13, wh ich presupposes a consideration of the similarity of 
the signs and goods as well.  They are essential to an  analysis of a likelihood of confusion.  Whilst 
Articles 7(4), 12b(3) and 14(3) do not specifically refer to the concept of likelihood of confusion 
between a GI and a trademark subject to the ex ception in Article 14(2), they, together with 
Articles 7(5)(b), 12b(3) and 12d(3) can ensure that, in cases where the likelihood of confusion is 
relatively high, the exception simply does not apply.   
7.659  The Panel notes that Article 14(2) only expressl y provides that the trademark may continue to 
be used.  However, the European Communities has emphasized that the trademark owner retains the 
right to prevent the use of a name registered as a GI by any person in relation to any goods which 
originate in a different geographical area or which do not comply with the specifications
585, and that 
the positive right to use the GI extends only to the li nguistic versions that have been entered in the 
register and not to other names or si gns which have not been registered.586  Accordingly, on the basis 
of the terms of the GI Regulation and of the Co mmunity Trademark Regulation, and the explanation 
of them provided by the European Communities, th e Panel finds that not only may the trademark 
continue to be used, but that the trademark owne r's right to prevent confusing uses is unaffected, 
except with respect to the use of a GI as entered in  the GI register in accordance with its registration. 
7.660  Furthermore, the European Communities has explai ned that the use of a name registered as a 
GI is subject to the applicable provisions of the food labelling and misleading advertising directives so 
that the ways in which it may be used are not unlimited.587 
7.661  For the above reasons, the Panel finds that the Regulation creates a "limited exception" within 
the meaning of Article 17 of the TRIPS Agreement.   
                                                      
585 European Communities' first written submission,  para. 317;  rebuttal submission, para. 336; 
responses to Panel questions Nos. 76 and 153. 
586 European Communities' rebuttal submission, paras. 288, 293 and 301; responses to Panel questions 
Nos. 63, 137 and 140; and comment on US response to Panel question No. 137. 
587 Supra  at note 495 and European Communities' first written submission, para. 319;  response to 
Panel question No. 153.  WT/DS290/R 
 Page 147 
 
 
 The proviso to Article 17  
7.662  Limited exceptions must satisfy the proviso  that "such exceptions take account of the 
legitimate interests of the owner of the trademark and of third parties" in order to benefit from 
Article 17.  The Panel must first establish what ar e "legitimate interests".  Read in context, the 
"legitimate interests" of the trademark owner ar e contrasted with the "rights conferred by a 
trademark", which also belong to the trademark owner.  Given that Article 17 creates an exception to 
the rights conferred by a trademark, the "legitimate interests" of the trademark owner must be something different from full enjoyment of those le gal rights.  The "legitimate interests" of the 
trademark owner are also compared with those of "t hird parties", who have no rights conferred by the 
trademark.  Therefore, the "legitimate interests", at least of third parties, are different from simply the 
enjoyment of their legal rights.  This is confirmed by the use of th e verb "take account of", which is 
less than "protect".   
7.663  The Panel agrees with the following view of the Panel in Canada – Pharmaceutical Patents , 
which interpreted the term "legitimate interests" of a patent owner and third parties in the context of 
Article 30 as follows:  
"To make sense of the term 'legitimate inter ests' in this context, that term must be 
defined in the way that it is often used  in legal discourse – as a normative claim 
calling for protection of interests that are 'justifiable' in the sense that they are 
supported by relevant public policies or other social norms."
588   
In our view, this is also true of the term "legitimat e interests" of a trademark owner and third parties in 
the context of Article 17.  
7.664  The legitimacy of some interest of the tradem ark owner is assumed because the owner of the 
trademark is specifically identified in Article 17.  The TRIPS Agreement itself sets out a statement of what all WTO Members consider adequate standard s and principles concerning trademark protection.  
Although it sets out standards for legal rights, it also provides guidance as to WTO Members' shared understandings of the policies and norms relevant to  trademarks and, hence, what might be the 
legitimate interests of trademark owners.  The func tion of trademarks can be  understood by reference 
to Article 15.1 as distinguishing goods and services of undertakings in the course of trade.  Every 
trademark owner has a legitimate interest in preserving  the distinctiveness, or capacity to distinguish, 
of its trademark so that it can perform that functio n.  This includes its interest in using its own 
trademark in connection with the relevant goods a nd services of its own and authorized undertakings.  
Taking account of that legitimate interest will also take account of the trademark owner's interest in 
the economic value of its mark arising from the reputati on that it enjoys and the quality that it denotes.   
7.665  Turning to the Regulation, th e evidence shows that the owne r's legitimate interest in 
preserving the distinctiveness, or capacity to distinguis h, of its trademark can be taken into account in 
various ways.  Article 7(4) of the Regulation provid es that a statement of objection shall be admissible 
inter alia  if it shows that the registration of the propo sed GI would "jeopardize the existence ... of a 
mark".  This requires GI registration to be refused. 
7.666  Article 14(3) also requires the refusal of GI re gistration in light of a trademark's reputation 
and renown and the length of time it has been used , if a particular condition is fulfilled.  This 
addresses the distinctiveness, or capacity to distingui sh, of prior trademarks and can ensure that, in 
cases where trademark owners' legitimate interests w ould be most likely to be affected, the exception 
in Article 14(2) simply does not apply.   
                                                     
 
588 Panel report on Canada – Pharmaceutical Patents , para. 7.69. WT/DS290/R 
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 7.667  In the one instance in which Article 14(3) has been applied, th e European Communities 
informs the Panel that its authorities:  
"[T]ook account of the submissions made by  the interested parties and by some 
Member States, as well as of the discussions  which took place within the Committee.  
The main facts taken into consideration were the similarity of the signs;  the 
similarity of the products, having regard to the production methods and organoleptic 
properties;  the date of registration of the trademark;  the recognition of the trademark 
in the different EC member States, having rega rd in particular to the level of exports;  
and the labeling practices of the trademark and the proposed geographical indication."
589   
7.668  This indicates to the Panel that Article 14(3) of  the Regulation was, in fact, applied to take 
account inter alia  of the legitimate interest of the trademar k owners to protect the distinctiveness of 
their respective marks.   
7.669  In the other instance to which the parties refer,  the registration of the three Czech beer GIs 
contains an endorsement that they apply "without prejudice to any beer trademark or other rights 
existing in the European Union on the date of accession".590  Although the European Communities has 
confirmed that such an endorsement is unique and it has not explained in what other circumstances 
such an endorsement might be possible, this exampl e does show that, at least in this case, not only the 
legitimate interests of trademark owners, but al so their rights, have been taken into account. 
7.670  Where Articles 7(4) and 14(3) of the Regulation are unavailable, and a trademark is subject to 
Article 14(2), there remains the possibility that its di stinctiveness will be affected  by the use of the GI.  
The Panel does not consider this fatal to the a pplicability of Article 17 given that, as a provision 
permitting an exception to the exclusive right to prevent uses that would result in a likelihood of 
confusion, it presupposes that a certain degree of lik elihood of confusion can be permitted.  In the 
light of the provisions of Articles 7(4) and 14(3) , we are satisfied that where the likelihood of 
confusion is relatively high, the exception in Article 14(2) will not apply.  In any event, even where 
the exception does apply, Article 14(2) expressly pr ovides that the trademark may continue to be 
used, on certain conditions. 
7.671  The Panel notes that the proviso to Article 17 requires only that exceptions "take account" of 
the legitimate interests of the owner of the tradem ark, and does not refer to "unreasonabl[e] prejudice" 
to those interests, unlike the provisos in Artic les 13, 26.2 and 30 of the TRIPS Agreement and 
Article 9(2) of the Berne Convention (1971) as incor porated by Article 9.1 of the TRIPS Agreement.  
This suggests that a lesser standard of regard for the legitimate interests of the owner of the trademark 
is required.   
7.672  The Panel also notes that there may be situati ons where, in order to take account of the 
legitimate interests of the owner of a trademark and third parties, practical conditions may be required 
to distinguish the goods with the trademark from tho se using the GI and to distinguish the respective 
undertakings.   
7.673  For these reasons, the Panel considers that th e exception created by the Regulation takes 
account of the legitimate interests of the owner of the trademark within the meaning of Article 17.  
This finding is confirmed by responses to a questi on from the Panel which revealed that, of over 600 
                                                      
589 European Communities' response to Panel question No. 143.  Although there is no supporting 
evidence, all of the considerations cited by the Eu ropean Communities correspond to factors set out in 
Articles 13 and 14(3) of the Regulation. 
590 European Communities' rebuttal submission, paras. 286-293;  response to Panel question No. 142.  WT/DS290/R 
 Page 149 
 
 
 GIs registered under the Regulation over a period of ei ght years, the complainants and third parties are 
unable to identify any that, in their view, could be used in a way that would result in a likelihood of 
confusion with a prior trademark, with four exceptions.591  Three of these are the Czech beer GIs, the 
registration of which is subject to the endorsemen t set out earlier.  The only remaining example is 
"Bayerisches Bier", in respect of which the co mplainants have not shown an example of actual 
likelihood of confusion with a prior trademark.   
7.674  The Panel will now consider whether the excep tion created by the Regulation takes account 
of the legitimate interests of third parties. 
7.675  The parties to this dispute agree that "third  parties" for the purposes of Article 17 include 
consumers.  The function of a trademark is to di stinguish goods and services of undertakings in the 
course of trade.  That function is served not only fo r the owner, but also for consumers.  Accordingly, 
the relevant third parties include consumers.592  Consumers have a legitimate interest in being able to 
distinguish the goods and services of one undertaking from those of another, and to avoid confusion. 
7.676  Turning to the Regulation, Article 14(3) expr essly addresses consumers, by providing for the 
refusal of GI registration where "registration is liabl e to mislead the consumer as to the true identity of 
the product".  In the one instance in which Article  14(3) has been applied,  the European Communities 
informs the Panel that: 
"In essence, it was concluded that, although th e products were similar, the signs were 
not sufficiently similar to mislead the public, having regard to the degree of recognition of the trademark in the different Member States."
593   
7.677  This indicates to the Panel that Article 14(3) of  the Regulation was, in fact, applied to take 
account inter alia  of the legitimate interests of consumers.   
7.678  The Panel also observes, once again, that a na me can only be registered as a GI where it is 
used to describe an agricultural product or a foodstuff.  It is a precondition to GI registration that some 
consumers do, in fact, understand that the GI refe rs to the product from that geographical area with 
particular qualities or characteristics, which means that they do not consider that it indicates the 
trademark owner's goods. 
7.679  The European Communities submits that "third pa rties" for the purposes of Article 17 include 
persons using a GI in accordance with a GI registration.  The Panel agrees.  Article 17 permits an exception to the rights conferred by a trademark whic h include, according to Article 16.1, a right to 
prevent "all third parties" from using certain signs.  The basis of the complainant's claim is that those 
third parties include GI users.  It is logical that, if  GI users are included in the third parties subject to 
the trademark owner's right, they are also included in  the third parties taken into account in assessing 
the availability of an exception to that right.   
7.680  The legitimacy of the interests of GI users is  reflected in the TRIPS Agreement itself, to 
which all WTO Members have subscribed.  Under Section 3 of Part II, all WTO Members agree to provide certain protection to GIs, although they re main free to determine the appropriate method of 
implementing those provisions in accordance with Articl e 1.1.  The definition of a GI in Article 22.1 
reflects a legitimate interest that a person may have  in identifying the source and other characteristics 
of a good by the name of the place where it is from, if the name would serve that purpose.  
                                                     
 
591 See responses to Panel question No. 47  and Annex C.   
592 This is confirmed by the reference in Article 16.2 to "the relevant sector of the public", in relation to 
well-known trademarks.   
593 European Communities' response to Panel question No. 143. WT/DS290/R 
Page 150  
 
 Nevertheless, as "legitimate interests", the interests of GI users as third parties within the meaning of 
Article 17 would be different from the legal pr otection provided for in Articles 22 and 23.   
7.681  The Panel recalls that the example contained in Article 17 itself of "fair use of descriptive 
terms" provides some guidance as to what may satisfy its proviso.  Its use of the word "fair" and the nature of descriptive terms illustrate a public policy concern that certain terms should be available for 
use under certain conditions.  Although GIs are intellectual property rights, and not purely descriptive 
terms, the function of the terms in the example is analogous to a descriptive function of GIs and provides contextual support for the notion that the interest of GIs users in using a place name to 
indicate their products is "legitimate".   
7.682  Turning to the Regulation, Article 2(2) provides that a "designation of origin" or a 
"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 ..." (emphasis added).  There are 
additional conditions relevant to th e origin and quality, reputation or characteristics of the product.  
Further, the European Communities has confirme d that use of a GI remains subject to the 
requirements of the food labelling and misleading advertising directives which prohibit certain 
misleading and deceptive uses.
594  These considerations support the view that the interests of GI users 
of which the Regulation takes account are "legitimate". 
7.683  Article 13 of the Regulation sets out the protection conferred by GI registration.  In providing 
such protection, the Regulation not only "takes acc ount" of this legitimate interest, it also provides 
legally enforceable rights.   
7.684  For these reasons, the Panel considers that th e exception created by the Regulation takes 
account of the legitimate interests of third parties within the meaning of Article 17. 
7.685  On the basis of the evidence pr esented to the Panel, which is necessarily limited given that 
Article 14(3) of the Regulation has only been applie d once, and for all of the above reasons, the Panel 
concludes that the European Comm unities has succeeded in raising a presumption that the exception 
created by the Regulation to the trademark owner' s right provided for in Article 16.1 of the TRIPS 
Agreement is justified by Article 17 of the TRIP S Agreement.  Australia has not succeeded in 
rebutting that presumption.   
7.686  Therefore, the Panel concludes that with r espect to the coexisten ce of GIs with prior 
trademarks, the Regulation is inconsistent with Ar ticle 16.1 of the TRIPS Agreement but, on the basis 
of the evidence presented to the Pa nel, this is justified by Artic le 17 of the TRIPS Agreement.  
Articles 24.3 and Article 24.5 of the TRIPS Agreement are inapplicable.  
2. Identical signs for identical goods  
(a) Presumption of confusion 
(i) Main arguments of the parties 
7.687  Australia claims that the measure at issue is inc onsistent with Article 16.1 of the TRIPS 
Agreement because it does not "provide for" or "implement" the presumption of a likelihood of 
                                                      
594 Supra  at note 495 and European Communities' first written submission, para. 319;  response to 
Panel question No. 153.  WT/DS290/R 
 Page 151 
 
 
 confusion in the case of use of an identical sign for identical goods.595  The provisions of the 
Regulation do not grant to the authorities the necessary discretion to apply that presumption.596  
7.688  The European Communities  refers to its defence to the previous claim and makes some 
additional comments:  Members are not required to reproduce explicitly the presumption of Article 16.1 in their domestic law as long as the au thorities have the necessary discretion and comply 
with the presumption in practice.  It is extremely unl ikely that this situation will ever present itself in 
practice in view of the trademark registrab ility criteria and the GI definitions and product 
specifications.  If the situation should arise, Ar ticle 14(3) of the Regulation would permit the 
authorities to implement the presumption.  This clai m is purely theoretical as none of the GIs actually 
registered fall within this situation.
597 
(ii) Main arguments of third parties 
7.689  Brazil does not agree with the European Communiti es that there is no need to "reproduce 
explicitly" the presumption in Article 16.1 of the TRIPS Agreement as long as the registering authority or the courts had adequate discretion to ap ply it.  In Brazil's view, even if the domestic law 
of each EC member State incorporated the presump tion, this would not mean that the Community-
level registration under the Regulation also provided for its incorporation.
598 
7.690  New Zealand  refers to the second ground for admissibilit y of objections in Article 7(4) of the 
Regulation.  It agrees with Australia that the Regulat ion is inconsistent with Article 16.1 of the TRIPS 
Agreement because the owner of a registered trademar k may not be able to object successfully to a 
proposed GI registration even if its use would constit ute use of an identical or similar sign that would 
result in a likelihood of confusion.599 
(iii) Consideration by the Panel 
7.691  Article 16.1 of the TRIPS Agreement, in its firs t sentence, provides for a right that refers to 
"identical or similar" "signs" and "goods or servi ces" and depends on a "likelihood of confusion".  In 
its second sentence, it provides for a presumption of a " likelihood of confusion" with respect to use of 
an "identical sign for identical goods or services".  Therefore, the second sentence clarifies how the 
first sentence is implemented, in particular circumstances. 
7.692  The Panel refers to its conclusion on the previous claim, which is based on the finding that the 
first sentence of Article 16.1 is applicable, and that the Regulation prevents the exercise of the right 
that it requires to be conferred.  It follows th at the presumption in the second sentence, which governs 
implementation of the first sentence, is also applicab le, in the particular circumstances that it sets out. 
7.693  Australia has argued that the measure at issu e does not "provide for" or "implement" a 
presumption of a likelihood of confus ion in the case of use of an iden tical sign for identical goods.  
There is no requirement that the text of the GI Re gulation, or its related or implementing measures, 
should explicitly "provide for" this presumption.  As  for the discretion granted to authorities under the 
Regulation, Australia has only demonstrated th at the Regulation "as such" does not permit the 
authorities to implement the presumption in the sec ond sentence only to the extent that it does not 
permit them to implement the right provided for in the first sentence.  Therefore, a finding on this 
                                                      
595 Australia's first written submission, para. 93 and subheading. 
596 Australia's rebuttal submission, para. 138. 
597 European Communities' first written submission, paras. 320-324. 
598 Annex C, para. 30. 
599 Annex C, para. 153. WT/DS290/R 
Page 152  
 
 claim will not provide any additional contribution to  a positive solution to this dispute and the Panel 
declines to consider it further.   
3. Trademark owners' right to object to GI registration 
(a) Admissibility of objections 
(i) Main arguments of the parties 
7.694  Australia  claims that the Regulation is incons istent with Article 16.1 of the TRIPS 
Agreement because it does not ensure that objections to registration are admissible on the grounds that 
use of the GI would result in a likelihood of confus ion.  Article 7(4) of the Regulation provides that 
objections are only admissible if the GI does not comply with the conditions in the Regulation or registration would "jeopardize the existence" of an  entirely or partly identical trademark.  This 
requirement also applies to objections by persons resident or established in other WTO Members by 
virtue of Articles 12b(3) and 12d(2).
600 
7.695  Australia argues that a right of objection is necessary to allow exercise of the right expressly 
required by Article 16.1 of the TRIPS Agreement,  although a right of objection itself may not be 
expressly required.  An objection procedure is th e only means available to a trademark owner to 
prevent a confusing use. The standard of "jeopardi ze the existence" is a far more rigorous standard 
than a "likelihood of confusion".601   
7.696  The European Communities  responds that Article 16.1 of the TRIPS Agreement does not 
grant a right to object to the registration of trad emarks, GIs or other intellectual property rights.  
Objection procedures in general are addressed in Ar ticle 62.4 of the TRIPS Agreement and trademark 
objection procedures specifically are addressed in Article 15.5.  The right to object is not necessary to 
"exercise" effectively the substantiv e right provided for in Article 16 if final registration decisions are 
subject to judicial review in accordance with Article 62.5.602 
7.697  The European Communities argues that Article 7( 4) of the Regulation permits objections if 
the proposed GI would jeopardize the existence of the mark, regardless of whether it is entirely or 
partially identical.  It refers to the French and Sp anish versions of the Regulation and asserts that this 
ground is broad enough to encompass the lik elihood of confusion with the trademark.603  This is 
confirmed by the fact that Australia is unable to identify any case in which the grounds of objection 
were limited in the manner alleged.604  Australia bears the burden of proof and must show that this 
reading is unreasonable and that it is impossible to  read Article 7(4) of the Regulation consistently 
with Article 16.1 of the TRIPS Agreement.605 
(ii) Main arguments of third parties 
7.698  Brazil argues that EC nationals would be able to protect a GI to the detriment of a prior 
registered trademark much more rapidly and effici ently than another WTO Member national would be 
able to defend trademark rights vis-à-vis an application for registration.606 
                                                      
600 Australia's first written submission, paras. 88-92.   
601 Australia's rebuttal submission, paras. 131, 133. 
602 European Communities' first written submission, paras. 327-333. 
603 European Communities' first written submission, paras. 334-338. 
604 European Communities' rebuttal submission, para. 353, citing Australia's response to EC question 
No. 1. 
605 European Communities' second oral statement, para. 230. 
606 Annex C, para. 31.  WT/DS290/R 
 Page 153 
 
 
 (iii) Consideration by the Panel 
7.699  Article 16.1 of the TRIPS Agreement sets out  the minimum right which Members must 
provide to the owners of registered trademarks a nd which they may also make available on the basis 
of use.  It is a right for trademark owners to prev ent certain uses.  The Panel takes note that trademark 
owners are not able to exercise their right to pr event use of a GI after GI registration. However, 
Australia has not explained why the trademark owner's right to prevent use implies a right to object to 
GI registration.   
7.700  Article 15.5 provides for a right of objection to registration of a trademark  but there is no 
corresponding provision in Part II regarding the registration of a GI .  There are provisions on the 
acquisition and maintenance of intellectual propert y rights, including GIs, in Article 62.  These 
specifically refer to related inter partes procedures such as opposition, revocation and cancellation, in 
paragraph 4, which is cross-refere nced in paragraph 5.  The opportunity or right to object forms part 
of an opposition procedure.  However, Article 62 lies outside the Panel's terms of reference.   
7.701  For these reasons, the Panel concludes that Au stralia has not made a prima facie case in 
support of this claim. 
(b) Consideration of objections  
(i) Main arguments of the parties 
7.702  Australia  also claims that the Regulation is inc onsistent with Article 16.1 of the TRIPS 
Agreement because it does not ensure that an objectio n by the owner of a registered trademark will be 
considered by the "ultimate decision maker", being the regulatory committee of EC member States.  
This applies to objections filed by persons resi dent or established in an EC member State under 
Article 7(1) of the Regulation and also objections filed by persons resident or established in other 
WTO Members under Article 12b(2) and 12d(1).  Austra lia argues that consideration of an objection 
by the regulatory committee is essential to a regist ered trademark owner being able to exercise the 
rights required to be conferred by Article 16.1 of the TRIPS Agreement.607  Australia disagrees with 
the European Communities' views on estoppel.608 
7.703  The European Communities refers to its defence to the prev ious claim.  It adds that the 
Committee established under Article 15 of the Regul ation is not the "ultimate decision maker".  
Further, the authorities of the EC member States are not required to transmit objections to the Commission, but their decisions are not discretionary and may be subject to judicial review based on procedural requirements of their respective admini strative laws.  Whilst the authorities of other WTO 
Members enjoy complete discretion in the transm ission of objections to the Commission, those 
Members would be estopped from complaining that th e refusal of their own authorities to transmit an 
objection had infringed the trademark rights of their own nationals.
609   
(ii) Consideration by the Panel 
7.704  The Panel refers to its findings at paragraphs  7.699 and 7.700 and concludes, for the same 
reasons, that Australia has not made a prim a facie case in support of this claim.  
                                                      
607 Australia's first written submission, paras. 94-99. 
608 Australia's rebuttal submission, paras. 73-83. 
609 European Communities' first written submission, paras. 339-344; second oral statement, para. 231. WT/DS290/R 
Page 154  
 
 E. O
THER CLAIMS  
1. Minimum standards of GI protection  
(a) Main arguments of the parties 
7.705  Australia claims that the European Communities fa ils to provide at Community level the 
legal means for interested parties to prevent uses in  respect of a GI registered, or proposed to be 
registered, under the Regulation, contrary to Article 22.2 of the TRIPS Agreement.610  It argues that 
the obligation under Article 22.2 of the TRIPS Agr eement creates an obligation "in respect of" GIs 
which means "as concerns" GIs.  The obligation is not  limited to actions to protect GIs, but extends to 
any situation that concerns GIs, including a situati on involving the proposed registration of a GI that 
potentially constitutes an act of unfair competition within the meaning of Article 10 bis of the Paris 
Convention (1967).611   
7.706  Australia argues, by way of example, that it is  entirely possible that there are products which, 
while originally based on a European production pr ocess, have been furthe r developed and refined 
outside the European country of origin and wh ich have subsequently come to represent the 
"international" trading standard for that product.  Registration of that name as a GI – although it may 
qualify for registration -  could well constitute misl eading use or an act of unfair competition within 
the meaning of Article 10 bis of the Paris Convention (1967).612  Australia does not challenge any 
particular GI as contrary to Article 22.2 of th e TRIPS Agreement, but argues that the European 
Communities has failed to provide the legal means by wh ich interested parties can seek to test "such 
issues" in relation to the registration of a GI under the Regulation.613 
7.707  Australia argues that the Europ ean Communities is not obliged to comply with a particular 
obligation through a single measure applicable thr oughout its territory but rather, while it can choose 
to offer more extensive protection of GIs at the Community level, it must also ensure that it does not 
breach its TRIPS obligations in doing so.  The Eu ropean Communities has effectively implemented a 
TRIPS right – at the Community level – without also  effectively implementing at the same level the 
concurrent TRIPS obligations.614  An assertion that the European Communities complies with 
Article 22.2 of the TRIPS Agreement under the laws of  the EC member States is an admission that the 
Regulation itself does not comply.  The Regulation disturbs what may otherwise be sufficient to meet the  European Communities' obligations.
615   
7.708  The European Communities considers that this claim is insufficiently argued but responds 
as follows:  (1) It considers that Article 22.2 of the TRIPS Agreement is concerned exclusively with the protection of GIs.  It cannot be invoked by a trademark right holder to prevent the use of a GI;  
(2) The use of a validly registered GI, which is otherwise consistent with the TRIPS Agreement, 
cannot mislead the public as to the geographical origin  of the goods.  Registration of the GI seeks to 
avoid precisely that; and  (3) Registration or use of a GI consistently with domestic law cannot 
constitute an act of unfair competition within the meaning of Article 10 bis of the Paris Convention 
(1967).  In any event, registered GIs remain s ubject to EC labelling and misleading advertising 
legislation and the unfair competition laws of th e EC member States.  These other measures and the 
                                                     
 
610 Australia's first written submission, paras. 7 and 61. 
611 Australia's first written submission, paras. 154-155. 
612 Australia's rebuttal submission, para. 170.  See also its response to Panel question No. 24. 
613 Australia's second oral  statement, para. 85. 
614 Australia's responses to Panel questions Nos. 81 and 82. 
615 Australia's second oral  statement, para. 112.  WT/DS290/R 
 Page 155 
 
 
 Regulation apply cumulatively.  In any event, regi stration of a GI is not a "use".  (4) There is no 
requirement that protection must be at the Community level.616   
7.709  The European Communities comme nts as follows on the example of a product name which 
has become generic: (a) It does not understand how u se of a name which is not generic but is a GI in 
the country of protection could be misleading;  (b ) Article 22.2 concerns acts against the holders of 
GIs as defined in Article 22.1, not other parties;  (c ) the exercise of a right conferred by a Member to 
comply with the TRIPS Agreement is not a di shonest practice in international trade; and 
(d) Article 22.2(a) requires the protection of GIs unl ess they have become generic in the country of 
protection, but Australia's example implies that Article 22.2(b) prevents the protection of GIs if they have become generic in another country.
617   
(b) Consideration by the Panel  
7.710  The Panel begins its considera tion of this claim by noting that Article 22.2 of the TRIPS 
Agreement provides as follows: 
"2. In respect of geographical indica tions, Members shall provide the legal 
means for interested parties to prevent:   
(a) the use of any means in the designation or presentation of a 
good 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 good; 
(b) any use which constitutes an act of unfair competition within 
the meaning of Article 10 bis of the Paris Convention (1967)." 
7.711  The term "geographical indications " is defined in Article 22.1 of the TRIPS Agreement.  It is 
not disputed that registered "designations of orig in" and registered "geographical indications", as 
defined in the Article 2(2) of the Regulation, are a subset of "geographical indications" as defined in 
Article 22.1 and therefore relevant to the European  Communities' implementati on of Article 22.2.   
7.712  Article 22.2 creates an obligation that applies "in respect of" geographical indications.  The 
ordinary meaning of the word "respect" as used in th at phrase can be defined as "relation, connection, 
reference, regard.  Earliest in have respect to;  now chiefly in with respect to, in respect to ".
618   
7.713  This is a very broad phrase.  However, in  accordance with the general rule of treaty 
interpretation, the ordinary meaning of the phrase "in respect of" must be interpreted in context and in 
the light of the object and purpose of the Agreement. 
7.714  Article 22.2 is found in Section 3 of Part II of the TRIPS Agreement.  Part II sets out 
minimum standards concerning the availability, scope and use of intellectual property rights, which is 
one of the objects and purposes of the Agreement, as highlighted in paragraph (b) of the second recital 
in its preamble.  The first seven sections of Part II contain standards relating to categories of intellectual property rights.  Each Section provides for a different category of intellectual property, 
setting out, as a minimum, the subject matter which is eligible for protection, the scope of the rights 
conferred by the relevant category of intellectual property and permitted exceptions to those rights.  
                                                     
 
616 European Communities' first written submission, pa ras. 411-415;  rebuttal submission, para. 393;  
response to Panel question No. 159. 
617 European Communities' rebuttal submission, paras. 386-392. 
618 The New Shorter Oxford English Dictionary  (1993). WT/DS290/R 
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 Section 3 contains all these features for the category of GIs, as highlighted in its title, which reads 
"Protection of Geographical Indications".  Article  23.1 expressly provides for protection to prevent 
use of a GI for wines and spirits.  Whilst the protection of GIs affects the protection of trademarks, as 
expressly recognized in Articles 22.3 and 23.2, Sect ion 3 does not provide for trademark protection, 
except to the extent that trademark systems are used to protect GIs.  Therefore, read in context, the 
obligation in Article 22.2 to provi de certain legal means "in respect of" GIs, is an obligation to 
provide for the protection of GIs.
619  Australia's claim does not appear to concern the protection of 
GIs, but rather the protection of other subject matter against the protection of GIs.  Therefore, it does 
not disclose a cause of action under Article 22.2. 
7.715  With respect to the example of product names th at may satisfy the conditions for protection in 
the Member where protection is sought but which have  become the international trading standard for a 
product, it is not entirely clear what Australia mean s by the term "international trading standard".  
However, it suffices to note that Article 22.2 appl ies to geographical indications that satisfy the 
definition in Article 22.1.  Article 22.2 does not apply to generic terms, as confirmed by Article 24.6.  
Each Member applies the definition of GIs with r espect to its own territory  so that the question 
whether the indication is generic or otherwise not entitled to protection in another Member's territory 
is not relevant, unless the other Member is the country of origin.   
7.716  Australia's example does not concern another Me mber that is the country of origin, and 
therefore is inapposite to Article 22.2.   
7.717  With respect to the suggestion that the Eur opean Communities must provide the legal means 
to test issues such as those in  the above example, the Panel notes that Article 22.2 creates an 
obligation to provide the legal means to prevent certain  uses.  To the extent that Australia's reference 
to the testing of issues relates to  the right to seek eventual legal relief, it has failed to demonstrate 
what uses covered by Article 22.2 are permitted by the Regulation without a legal means of 
prevention.  
7.718  For the above reasons, the Panel rejects Aust ralia's claim under Article 22.2 of the TRIPS 
Agreement.   
2. Articles 10 bis and 10 ter of the Paris Convention (1967) 
(a) Main arguments of the parties 
7.719  Australia  claims that the European Communities de nies to nationals of other WTO Members 
effective protection against unfair competition and appr opriate legal remedies to repress effectively all 
acts of unfair competition, contrary to Article  2.1 of the TRIPS Agreement "incorporating 
Articles 10 bis(1) and 10 ter(1) of the Paris Convention (1967)".620  This claim is based on the 
argument that the Regulation provides a Community-wide system of registration of GIs that provides effective protection from acts of unfair competit ion, including in relation to later trademark 
applications, within the Community, but not a Co mmunity-wide system of effective protection of 
trademarks from acts of unfair competition arisin g from the later registration of GIs under the 
Regulation.
621  Australia argues that Article 10 bis(1) includes the obligation to protect trademarks 
against unfair competition from a GI and that Article 10 ter(1) therefore ensures that a Member 
                                                      
619 Consequently, whilst Article 22.4 provides for protection against GIs, it only applies to the 
protection of other GIs.   
620 Australia's first written submission, paras. 6 and 60.  Australia quotes the text of Articles 10 bis and 
10ter and Bodenhausen, see supra  at 79, p. 144, on the meaning of Article 10 bis(2), in first written submission, 
paras. 75 and 76, fns. 32, 33 and 34; and rebuttal submission, para. 144, referring to the same source and WIPO Model Provisions on Protection against Unfair Competition set out in Exhibit AUS-9. 
621 Australia's first written submission, paras. 10, 113-118.  WT/DS290/R 
 Page 157 
 
 
 provides the mechanisms necessary to assure prot ection against unfair competition "in any guise"622 
and to assure to nationals of other Members ef fective protection against unfair competition that 
permits account to be taken of honest pr actices established in international trade.623  Australia 
confirms that it seeks distinct findings in respect of its claim under Article 10 bis pursuant to 
Article 2.1 of the TRIPS Agreement and its clai m under Article 22.2(b) of the TRIPS Agreement.624 
7.720  The European Communities responds that this claim is insufficiently argued and difficult to 
understand.  Australia does not explain how the use of  a registered GI, which is otherwise consistent 
with the TRIPS Agreement and, in particular, Artic les 16 and 24.5, could constitute an act of unfair 
competition within the meaning of Article 10 bis(1) of the Paris Convention (1967).  In any event, the 
use of a registered GI remains subject to EC le gislation on labelling and mi sleading advertising, as 
well as the laws of the EC member States on unfai r competition, which are outside the Panel's terms 
of reference.  There is no basis in Article 10 bis(1), or anywhere else in the Paris Convention (1967) 
for the proposition that the protection against unf air competition must be provided at any given 
territorial level.  The claim under Article 10 ter(1) of the Paris Convention (1967) is unfounded for the 
same reasons.625  The European Communities responded to the claim under Article 2.1 of the TRIPS 
Agreement separately, and argued that, as a conseque nce of the other two claims, this claim was also 
unfounded.626 
(b) Consideration by the Panel 
7.721  The Panel notes that Australia's claims relate  to two provisions of the Paris Convention 
(1967) and the protection of trademarks against acts of unfair competition arising from the later 
registration of GIs.  These claims are based on th e assertion that where the European Communities 
implements "Community-wide" protection for GIs against unfair competition arising from trademark 
protection, it must also implement Community -wide protection for trademarks against unfair 
competition arising from GI protection.   
7.722  The European Communities indicated that it had difficulty understanding the claims but it 
responded as set out in paragraph 7.720.   
7.723  Australia's response to the Europ ean Communities' concerns was that "[i]t is irrelevant that 
the EC might not understand" how the use of a TRI PS-consistent GI could constitute an act of unfair 
competition and that "[i]t is also irrelevant" that the use of a registered GI  remains subject to 
legislation on labelling, misleading a dvertising and unfair competition laws.627  However, it did 
provide an additional element to its ar guments when it referred to Article 10 bis(2) and speculated as 
follows: 
"It may be that, having regard to the principl e of territoriality and to developments in 
international trade over time, recognition of  a TRIPS-defined GI could constitute an 
act of unfair competition within the meaning of Paris Article 10 bis(2)."   
7.724  The Panel sought clarification from Australia as to  the relevance of the fact that a measure is 
or is not applicable throughout a Member's territory , and whether Australia's claim was related to the 
fact that the EC member States are also WTO Member s.  Australia reiterated the assertion in its claim, 
but added that the European Communities had effectively implemented a "TRIPS right", at 
                                                      
622 Australia's response to Panel question No. 82. 
623 Australia's rebuttal submission, paras. 144-145. 
624 Australia's response to Panel question No. 161. 
625 European Communities' first written submission, paras. 398-402. 
626 European Communities' first written submission, paras. 403-404. 
627 Australia's rebuttal submission, para. 146. WT/DS290/R 
Page 158  
 
 Community level, without also effectively implem enting at the same level the concurrent "TRIPS 
obligations".
628  Australia did not explain why, in its view, the right to provide more extensive 
protection than that required by the minimum standards of the TRIPS Agreement entailed "concurrent" obligations.  
7.725  The Panel observed that these claims related to  trademark protection and sought clarification 
from Australia on the need for additional conclusions  if there were a conclusion on the claims under 
Article 16.1 of the TRIPS Agreement.  Australia re iterated its assertion of an obligation to protect 
trademarks against unfair competition from a GI, but added that these provisions together ensure that 
a Member actually provides the m echanisms necessary to ensure pr otection against unfair competition 
"in any guise".  Australia did not elaborate on why, in its view, the GI Regulation should provide such 
protection.  Its final comments on these claims were as follows: 
"The obligations established by Paris Articles 10 bis(1) and 10 ter(1) are 
straightforward, and WTO Members are require d to comply with those obligations by 
the terms of TRIPS Article 2.1.  Australia does not have to explain how the use of a 
registered EC-defined GI could constitute  an act of unfair competition within the 
meaning of those provisions of the Paris Convention.  That would be determined by 
the body required to be empowered by the EC  to consider such matters in the event 
that the holder of an industrial property ri ght within the EC considered that such 
issues may be raised by the registration of  an EC-defined GI."  [emphasis added] 
7.726  The Panel has reviewed Australia's submissions , statements and responses to questions and 
notes that, whilst Australia has repeat edly stated the obligations with which it alleges inconsistencies, 
it has not clearly explained the fundamental premi se of its claims, which is that the European 
Communities must provide at Community-level protection for trademarks against unfair competition arising from GIs.  Nor has it clearly explained why the measure at issue should provide that 
protection.  The Panel considers that those issues needed to be explained.  The Panel itself sought 
clarification of certain issues and notes that the res pondent also raised these matters in its first written 
submission. 
7.727  The Panel cannot relieve Australia of its res ponsibility to prove its case.  Some evidence, 
although not necessarily specific instances, was required to indicate what uses covered by Article 10 bis of the Paris Convention (1967)  are permitted by the Regulati on without a legal means of 
prevention.  Australia's speculative remark "having regard to the principle of territoriality and to 
developments in international trade over time" rest ated the nature of the measure at issue and the 
nature of the obligation at issue without making a cl ear link between the two.  Australia's example of 
products that have become the "international" tradin g standard, considered in  the previous sub-section 
in relation to Article 22.2(b) of the TRIPS Agreemen t, does not appear to relate to the present claim, 
which relates to the protection of trademarks from acts of unfair competition.  Consequently, 
Australia has not demonstrated that legal remedies are required in accordance with Article 10 ter(1) 
either.   
7.728  Accordingly, the Panel concludes that Australia has not made a prima facie case in support of 
its claims under Articles 10 bis and 10 ter of the Paris Convention (1967) "as incorporated in" the 
TRIPS Agreement.
629    
                                                      
628 Australia's response to Panel question No. 81. 
629 This does not imply any view as to whether and in what respects Articles 10 bis and 10 ter of the 
Paris Convention (1967) are incorporated by Article 2.1 of the TRIPS Agreement.  WT/DS290/R 
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 3. Claims under Part III of the TRIPS Agreement  
(a) Main arguments of the parties 
7.729  Australia  claims that the Regulation is inconsistent  with Articles 41.1, 41.2,  41.3 and 42 of 
the TRIPS Agreement because of the provisions concerning objections by a trademark right holder, and the functioning of the regulatory committee.
630 
7.730  The European Communities responds that these claims are unfounded because Part III of 
the TRIPS Agreement does not apply to the Regulation.  The Regulation lays down an administrative procedure for the acquisition of GIs via a system of registration and does not purport to regulate enforcement procedures, which are the subject of Part III of the TRIPS Agreement.
631 
(b) Consideration by the Panel 
7.731  These claims are made under the obligations with  respect to enforcement procedures found in 
Part III of the TRIPS Agreement.  The obligations in Part III are applicable to intellectual property 
rights covered by the Agreement, including geographi cal indications, by virtue of the definition of 
"intellectual property" in Article 1.2 and the first sentence of Part III.  However, Australia's claims 
concern an inter partes procedure permitting objections which is related to the acquisition of 
intellectual property rights under the Regulation.  As  such, it is covered by Part IV of the TRIPS 
Agreement, not Part III.  The general princi ples in Article 41.2 and 41.3 apply to such inter partes 
procedures, where a Member's law provides for them, by virtue of Article 62.4 of the TRIPS Agreement.  However, Article 62.4 is outside the Pa nel's terms of reference.  Accordingly, the Panel 
rejects these claims.  
4. Claims concerning transitional national protection 
(a) Main arguments of the parties 
7.732  Australia claims that the Regulation does not ensure that decisions by EC member States to 
grant transitional national protection pursuant to Article 5(5) do not diminish the protection of 
trademarks under the TRIPS Agreement, in the same way as registration of GIs at the Community 
level.  As a consequence, it claims that the Regula tion is inconsistent with Article 2.1 ("incorporating 
Articles 10 bis(1) and 10 ter(1) of the Paris Convention (1967)"), Articles 16.1, 41.1, 41.2, 41.3 and/or 
42 of the TRIPS Agreement.  It submits that th ese claims are independent of its other claims.
632   
7.733  The European Communities  responds that these claims are dependent on the substantive 
claims and are equally unfounded.633 
(b) Consideration by the Panel 
7.734  These claims concern Article 5(5) of the Re gulation, which provides that, in certain 
circumstances, an EC member State may "on a tr ansitional basis only, grant on the national level a 
protection in the sense of the present Regulation" for GIs pending a decision on registration by the Commission. 
7.735  The Panel recalls once again that, in its prel iminary ruling of 5 April 2004, it assured the 
European Communities that "it is fully entitled to know the arguments of Australia during the course 
                                                     
 
630 Australia's first written submission, paras. 119-148. 
631 European Communities' first written submission, paras. 357-389, 393-397. 
632 Australia's first written submission, paras. 14 9-150;  rebuttal submission, paras. 162-165. 
633 European Communities' first written submission, paras. 407-408. WT/DS290/R 
Page 160  
 
 of the proceedings.  Those arguments must be set out and may be clarified in Australia's 
submissions."
634   
7.736  Australia has cited a series of numbered provis ions of the TRIPS Agreement and provided 
narrative text that paraphrases those provisions, bu t it has set out little in the way of supporting 
arguments.  It has not explained whether Article 5(5)  grants EC member States authority to continue 
to apply national legislation, what is the nature or content of that protection, how it can diminish 
trademark protection "in the same way" as the prot ection granted by registration under the Regulation 
nor how this is alleged to violate enforcement ob ligations in Part III of the TRIPS Agreement.  
Therefore, it is not clear why Australia considers th at the Regulation should ensure that decisions of 
EC member States should be taken with proper rega rd to the provisions of the TRIPS Agreement.  
Accordingly, Australia has not made a pr ima facie case in support of its claim. 
5. Claims concerning individual registrations 
(a) Main arguments of the parties 
7.737  Australia claims, for reasons related to the amen dment of the Regulation in April 2003, 
violations of the national treatment obligations in Articles 2(1) and 2(2) of the Paris Convention as 
incorporated by Article 2.1 of the TRIPS Agreement,  and in Article 3.1 of the TRIPS Agreement, the 
obligation in Article 2.1 of the TRIPS Agreement to  comply with Articles 1 through 12 and 19 of the 
Paris Convention (1967), and the obligation in Arti cle 1.3 of the TRIPS Agreement to accord the 
treatment provided for in the TRIPS Agreement to the nationals of other Members.635 
7.738  Australia notes that as of April 2003, more than 120 GIs had been registered under the 
Regulation according to a procedure which granted a right of objection to persons resident or 
established in an EC member States but not to na tionals of other WTO Members not resident or 
established in an EC member State.  The amendment inserted Article 12d which grants a right of objection to persons resident or established in WTO Members, but did not provide any right of 
objection to GIs already registered or adjust the period for lodgement of objections to applications which were pending.
636   
7.739  Australia also notes that as of April 2003, more than 480 GIs had been registered under a 
simplified procedure under the former Article 17 wh ich granted a right of objection to EC member 
States but not to the nationals of other WTO Memb ers.  The amendment repealed Article 17 but did 
not grant a right of objection to nationals of other WTO Members in respect of GIs already registered or affect the continuing registrations in any other way.
637 
7.740  In response to a question from the Panel, Austra lia indicated that it seeks relief in respect of 
existing registration for which the European Comm unities did not comply with Articles 16.1, 22.2, 
41.1, 41.2, 41.3 and 42 of the TRIPS Ag reement and Article III:4 of the GATT 1994.638  It submits 
that its claims under these provisions, as well as its claims under Article 2.1 of the TRIPS Agreement, "incorporating" Articles 10 bis and 10 ter of the Paris Convention (1967), and Article 24.5 of the 
TRIPS Agreement, encompass the registration of 480 GIs under the simplified procedure.
639  
However, it does not challenge any specific individual registration. 
                                                      
634 See para. 40 of the 5 April 2004 preliminary ruling set out in para. 7.2 of this report. 
635 Australia's first written submission, paras. 189 and 194. 
636 Australia's first written submission, paras. 184-188. 
637 Australia's first written submission, paras. 190-193. 
638 Australia's response to Panel question No. 92. 
639 Australia's comment on the EC response to Panel question No. 163.  WT/DS290/R 
 Page 161 
 
 
 7.741  The European Communities responds that the individual registrations themselves are not in 
violation of national treatment obligations.  Austra lia's claim is based exclusively on the argument 
that no right of objection was available to third country nationals under the Regulation prior to its 
amendment.  The rules governing the procedure leading up to the adoption of the measure are not the same as the measure itself.  It is not clear how an individual registration that grants protection to a 
specific GI could grant less favourable treatment to third country nationals.
640  Moreover, under the 
simplified procedure, there was no right of objection to European Communities residents or third 
country residents.641 
7.742  The European Communities considers it important  to remark that Australia is seeking a 
retroactive remedy that it could not have obtaine d had it attacked the measure while it was still in 
force.  It submits that it is universally accepte d that Article 19.1 of the DSU signifies that the 
recommendations of panels and the Appellate Body are prospective, not retrospective, in nature.  
Even if Australia had challenged the Regulation befo re it was amended, it could not have claimed that 
the European Communities undo all the registrations already carried out or reopen a possibility of 
objection against such registrations or provide compensation.642 
7.743  The European Communities consid ers that Australia's claims under provisions other than the 
national treatment provisions were raised after its  first written submission and without any supporting 
arguments.  In any case, these claims relate to objection procedures, which are optional under the 
TRIPS Agreement and unrelated to th e treatment of products under GATT 1994.643 
(b) Consideration by the Panel 
7.744  The Panel notes that these claims concern indi vidual registrations effected under the former 
Article 17 of the Regulation, which has been rep ealed, and under Article 6 of the Regulation, which 
remains in effect. 
7.745  With respect to individual registrations e ffected under the former Article 17 of the 
Regulation, the Panel recalls its ruling in  paragraph 7.17 that it will make findings  with respect to 
prior versions of the Regulation where they serve some useful purpose in reaching conclusions with 
respect to measures within its terms of reference, in cluding individual registrations, that are currently 
in force.  
7.746  The simplified procedure under the former Artic le 17 of the Regulation granted no right of 
objection.  Article 7 provides for objections, but the former Article 17(2) provi ded that Article 7 "shall 
not apply" under the simplified procedure.  Austra lia directs our attention to a judgement of the 
European Court of Justice, concerning protection of the name "Feta", which made reference to 
Article 17(2).  However, the Panel notes that the findings of the Court in that judgement do not 
suggest that a right of objection under Artic le 7 applied under the simplified procedure.644   
7.747  The Panel noticed that the initial registrations  under Article 17 in 1996 recited provisions of 
the Regulation that concerned prior trademark rights.645  In response to a question from the Panel, the 
European Communities explains that this was an implicit reference to "Bayerisches Bier" which was 
                                                      
640 European Communities' first written submission, paras. 158-161, 171. 
641 European Communities' first written submission, pa ra. 172;  rebuttal submission, paras. 186-190. 
642 European Communities' first written submission, paras. 162-169, 171;  rebuttal submission, 
paras. 179-185 and 191-196. 
643 European Communities' rebuttal submission, paras. 171-173;  response to Panel question No. 163. 
644 Denmark, Germany and France v Commission , joined Cases C-289/96, C-293/96 and C-299/96 
[1999] ECR I-01541: see Australia's first written submissi on, para. 191 and Exhibit COMP-11.  The Panel refers 
to para. 92 of the findings of the Court. 
645 Commission Regulation (EC) No. 1107/96 set out in Exhibit COMP-3a. WT/DS290/R 
Page 162  
 
 not registered at that time "[b]ecause of the concerns  raised by the owners of the trademarks at issue 
and by some Member States".
646  On the basis of that statement al one, Australia asserts that "[c]learly, 
there was indeed a mechanism available to at least  some EC trademark right holders to make their 
objections known in the context of the decision- making process provided by Article 15 of Regulation 
No. 2081/92."647  However, Australia has not been any more specific concerning this mechanism.648  
Therefore, Australia has not demonstrated the first premise of its national treatment claim with respect 
to individual registrations effected under the former  Article 17, which was that there was a difference 
in the procedures or opportunities for objections themselves. 
7.748  With respect to individual registrations effected under Article 6 of the Regulation, 
Article 7(3) provides a prior right to submit statemen ts of objections to EC member States to persons 
resident or established within the European Co mmunities.  The European Communities amended the 
Regulation in April 2003 by inserting Article 12d, which provides a right to submit statements of 
objections to the authorities of other WTO Members to  persons resident or established in those other 
WTO Members.  Therefore, with respect to registrations effected under Article 6, there was 
previously a difference in the objection procedur es.  However, Australia does not challenge the 
procedures for objections as they stood prior to the April 2003 amendment.  It challenges individual 
registrations effected under the Regulation, includ ing all those effected prior to that amendment, 
which remain in effect.  It does not challenge any specific individual registration.649  
7.749  The Panel observes that the act of registration, and the omission of not allowing objections 
from foreign residents, both occurred in the past, prio r to the date of establishment of the Panel.  The 
provisions of the Regulation which provided for th ese acts and omissions ha ve been amended and no 
longer exist as they did at the time of the registra tions.  However, the indivi dual registrations, in terms 
of the legal protection which flows from those re gistrations in accordance with Article 13 of the 
Regulation, constitute subject matte r which continues to exist.  Th erefore, the TRIPS Agreement is 
applicable to them.650   
7.750  Nevertheless, Australia has not demonstrated how individual registrations, as opposed to the 
procedures under which they were granted, either u nder the former Article 17 or the current Article 6, 
are inconsistent with the European Communities' obligations under the TRIPS Agreement, either in 
respect of national treatment or any of the other obligations that that agreement lists, because it 
effectively asserts the identity of the past act of registration and the presently existing subject matter.  
                                                      
646 European Communities' response to Panel question No. 144. 
647 Australia's comment on the EC response to Panel question No. 163. 
648 Australia's national treatment claims under the TRIPS Agreement with resp ect to the regulatory 
procedure under Article 15 are considered at paragraphs 7.390 to 7.402 above. 
649 The Panel asked Australia to clarify the form of  the recommendations which it seeks in respect of 
individual registrations.  Australia did not identify any specific individual registrations.  Instead, it replied that "Australia seeks rulings and recommendations to the degr ee necessary to establish the extent to which the EC's 
actions in registering – and thus providing ongoing protection to – more than 600 EC-defined GIs were 
inconsistent with the EC's obligations under the covered agreements at the time at which those EC – defined GIs 
were registered, thus enabling those continuing registrations to be brought into conformity with the EC's 
obligations under the covered agreements ".  The Panel also asked Australia whether it sought relief in respect of 
individual registrations in respect of their continuing inconsistency with trademark rights to be conferred under Article 16.1 of the TRIPS Agreement and, if so, to list th e individual registrations.  It replied that "Australia is 
not able to say which individual registrations may have constituted a denial of rights to trademark right holders 
... or to another party with a legitima te interest under any of the cited pr ovisions.  With due respect, however, 
nor can the EC legitimately say that its actions have not resulted in a denial of rights required to have been 
granted or made available under the TRIPS Agreement ...."  See Australia's responses to Panel questions 
Nos. 91 and 93. 
650 This is consistent with the approach of the Appellate Body to patents granted prior to the date of 
application of the TRIPS Agreement in Canada – Patent Term , at para. 69.  WT/DS290/R 
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 The continuing individual registrations are the subject  of Australia's claims here, but Australia does 
not submit any evidence relating to them, either  individually or as a group, other than the 
circumstances surrounding the act of registration, a nd the fact that they remain in force.   
7.751  Therefore, in view of the finding in paragr aph 7.750 and, additionally with respect to 
individual registrations under Article 17, the finding s in paragraph 7.747, the Panel concludes that 
Australia has failed to make a prima facie case in support of its claims with respect to individual 
registrations. 
6. Claim under Article 1.1 of the TRIPS Agreement 
(a) Main arguments of the parties 
7.752  Australia claims that, as a consequence of the Re gulation's inconsiste ncies with various 
provisions of the TRIPS Agreement, the European Communities has failed to comply with Article 1.1 
of the TRIPS Agreement.651 This claim does not address a separate aspect of the Regulation but 
Australia does seek confirmation that a WTO Member is obliged to give effect to the provisions of the 
TRIPS Agreement before it is able to offer more extensive protection for one particular category of 
intellectual property right.652 
7.753  The European Communities  responds that these claims are dependent on the substantive 
claims and are equally unfounded.653 
(b) Consideration by the Panel 
7.754  Article 1.1 of the TRIPS Agreement provides as follows: 
"1. Members shall give effect to the provisions of this Agreement.  Members 
may, but shall not be obliged to, implement in their law more extensive protection 
than is required by this Agreement, provided that such protection does not contravene 
the provisions of this Agreement.  Members shall be free to determine the appropriate 
method of implementing the provisions of this Agreement within their own legal 
system and practice." 
7.755  The Panel notes that the first sentence creates an obligation for Members to give effect to the 
provisions of the TRIPS Agreement and the second sentence recognizes Members' freedom to 
implement more extensive protection, subject to a condition.  After the expiry of the transitional 
arrangements in Articles 65 and 66 (and 70.8 and 70.9 ), as applicable, a Member is obliged to give 
effect to the provisions of the Agreement with resp ect to each category of intellectual property right, 
irrespective of whether it implements more extensiv e protection in the same or another category of 
intellectual property right.   
7.756  The Panel notes that Australia's claim under Article  1.1 is a consequential claim and considers 
that further findings on it would not provide any ad ditional contribution to a positive solution to this 
dispute.  The Panel exercises judicial economy with respect to this claim.  
                                                      
651 Australia's first written submission, paras. 153, 189, 194, 206. 
652 Australia's response to Panel question No. 82. 
653 European Communities' first written submission, paras. 405-406. WT/DS290/R 
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 7. Consequential claims  
(a) Main arguments of the parties 
7.757  Australia claims that the Regulation is inconsis tent with Article 65.1 of the TRIPS 
Agreement, which obliged the European Communities to apply the provisions of the TRIPS 
Agreement no later than 1 January 1996, because th e actions alleged in its other claims constitute 
contraventions of the European Communiti es' obligations under the TRIPS Agreement.
654 
7.758  Australia claims that the European Communities has not complied with Article XVI:4 of the 
WTO Agreement.655 as a consequence of the Regulation's incons istency with various provisions of the 
TRIPS Agreement, GATT 1994 and the TBT Agreement,  and of the European Communities' failure 
to observe its obligations pursuant to Articl es 1.1, 2.1 and 65.1 of the TRIPS Agreement.  
7.759  The European Communities  responds that these claims are dependent on the substantive 
claims and are equally unfounded.656 
(b) Consideration by the Panel 
7.760  The Panel notes that these are consequential claims and considers that findings on them 
would not provide any additional c ontribution to a positive solution to this dispute.  Therefore, the 
Panel exercises judicial economy with respect to these claims. 
VIII.  CONCLUSIONS AND RECOMMENDATION 
8.1 In light of the findings set out in this  report, the Panel concludes as follows: 
From Section A of the findings: 
(a) the measures and claims in Australia's request for establishment of a panel did not fail 
to meet the requirements of Article 6.2 of the DSU that it identify the specific 
measures at issue and provide a brief summary of the legal basis of the complaint 
sufficient to present the problem clearly;  
(b) the claims under Article 2(2) of the Paris Convention (1967) are within the Panel's 
terms of reference; 
(c) the claim under Article 4 of the Paris Convention (1967), as incorporated by 
Article 2.1 of the TRIPS Agreement and, consequently, under Article 24.5 of the 
TRIPS Agreement, is outside the Panel's terms of reference;  
(d) the claim under Article 41 in conjunction with Articles 43, 44, 45, 46, 48 and 49 of 
the TRIPS Agreement is outside the Panel's terms of reference;  
From Section B of the findings: 
(e) Australia has made a prima facie case that the equivalence and reciprocity conditions 
in Article 12(1) of the Regulation apply to the availability of protection for GIs that 
refer to geographical areas located in third countries outside the European 
                                                      
654 Australia's first written submission, paras. 207-208. 
655 Australia's first written submission, paras. 266-267. 
656 European Communities' first written submission, paras. 502-503.  WT/DS290/R 
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 Communities, including WTO Members a nd the European Communities has not 
succeeded in rebutting that case; 
(f) the Regulation is inconsistent with Article 3.1 of the TRIPS Agreement: 
(i) with respect to the equivalence and re ciprocity conditions, as applicable to 
the availability of protection; 
(ii) with respect to the application pr ocedures, insofar as they require 
examination and transmission of ap plications by governments; and 
(iii) with respect to the objection procedur es, insofar as they require verification 
and transmission of objections by governments; 
(g) Australia has not made a prima facie case in  support of its claims that the Regulation 
is inconsistent with Article 3.1 of the TR IPS Agreement and with Article 2(1) of the 
Paris Convention (1967) as incorporated by Article 2.1 of the TRIPS Agreement: 
(i) with respect to the equivalence a nd reciprocity conditions, as allegedly 
applicable to objections;  or 
(ii) with respect to the regulatory committee; 
(h) the Regulation does not impose a requirement of domicile or establishment 
inconsistently with Article 2(2) of the Paris Convention (1967) as incorporated by 
Article 2.1 of the TRIPS Agreement: 
(i) with respect to the availability of protection for GIs;   
(ii) with respect to the application procedures; or 
(iii) with respect to the objection procedures; 
(i) the Regulation is inconsistent with Article III:4 of GATT 1994: 
(i) with respect to the equivalence and re ciprocity conditions, as applicable to 
the availability of protection; and 
(ii) with respect to the application pr ocedures, insofar as they require 
examination and transmission of appli cations by governments, and these 
requirements are not justified by Article XX(d) of GATT 1994;  
(j) Australia has not made a prima facie  case in support of its claims that the Regulation 
is inconsistent with Article III:4 of GATT 1994 with respect to the regulatory 
committee;   
(k) Australia has not made a prima facie case in  support of its claim that the Regulation is 
inconsistent with Article 2.1 of the TB T Agreement with respect to the labelling 
requirement; WT/DS290/R 
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 From Section C of the findings:  
(l) Article 2.2 of the TBT Agreement is inapplicable to the inspection structures 
requirements, read together with Article 4 of the Regulation, and the Panel rejects 
Australia's claim; 
From Section D of the findings: 
(m) the Regulation is inconsistent with Articl e 16.1 of the TRIPS Agreement with respect 
to the coexistence of GIs with prior trademar ks but this is justified by Article 17 of 
the TRIPS Agreement.  In this respect: 
(i) Article 24.3 of the TRIPS Agreement is inapplicable; and 
(ii) Article 24.5 of the TRIPS Agreement is inapplicable; 
(n) Australia has not made a prima facie case in  support of its claims that the Regulation 
is inconsistent with Article 16.1 of the TR IPS Agreement with respect to the right of 
objection of trademark owners;  
From Section E of the findings: 
(o) the Panel rejects Australia's claim under Article 22.2 of the TRIPS Agreement;  
(p) Australia has not made a prima facie case in  support of its claims that the Regulation 
is inconsistent with Article 10 bis and 10 ter of the Paris Convention (1967) "as 
incorporated in the TRIPS Agreement";  
(q) the Panel rejects Australia's claims unde r 41.1, 41.2, 41.3 and 42 of the TRIPS 
Agreement (except as noted at paragraph 8.1(d)); 
(r) Australia has not made a prima facie case in support of its claims with respect to 
transitional national protection; and  
(s) Australia has not made a prima facie case in support of its claims with respect to 
individual registrations. 
8.2 The Panel exercises judicial economy with  respect to Australia's claims under: 
(a) Article 2(1) of the Paris Convention (1967), as incorporated by Article 2.1 of the 
TRIPS Agreement (except as noted at paragraph 8.1(g)) 
(b) Article 16.1 of the TRIPS Agreement (with respect to the presumption of confusion); 
(c) Articles 1.1 and Article 65.1 of the TRIPS Agreement;   
(d) Article III:4 of GATT 1994 (except as noted in paragraph 8.1); and  
(e) Article XVI:4 of the WTO Agreement.  
8.3 Under Article 3.8 of the DSU, in cases where there is an infringement of the obligations 
assumed under a covered agreement, the action is considered prima facie to constitute a case of 
nullification or impairment.  The Panel concludes th at, to the extent that the Regulation as such is  WT/DS290/R 
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 inconsistent with the covered agr eements, it has nullified or impaired  benefits accruing to Australia 
under these agreements. 
8.4 In light of these conclusions, the Panel recomme nds pursuant to Article 19.1 of the DSU that 
the European Communities bring the Regulation in to conformity with the TRIPS Agreement and 
GATT 1994. 
8.5 The Panel suggests, pursuant to Article 19.1 of the DSU, that one way in which the European 
Communities could implement the above recommenda tion with respect to the equivalence and 
reciprocity conditions, would be to amend the Regulat ion so as for those conditions not to apply to the 
procedures for registration of GIs located in other WTO Members which, it subm itted to the Panel, is 
already the case.  This suggestion is not inte nded to diminish the importance of the above 
recommendation with respect to any of the Panel's other conclusions. 
__________