WT/DS174/R/Add.1 
 Page A-1 
 
 
 ANNEX A 
 
SUBMISSIONS BY THE UNITED STATES 
 
 
Contents Page 
Annex A-1 United States' Response to th e European Communities' Request for a 
Preliminary Ruling (15 March 2004) A-2 
Annex A-2 First Written Submission of the United States (23 April 2004) 
 A-14 
Annex A-3 Oral Statement of the United States – First Substantive Meeting 
(23 June 2004) 
 A-60 
Annex A-4 Replies by the United States to  Questions posed by the Panel and the 
European Communities to the Complaining Parties following the First Substantive Meeting (8 July 2004) 
 A-73 
Annex A-5 Second Written Submission of the United States (22 July 2004) 
 A-113 
Annex A-6 Opening Statement of the Unite d States – Second Substantive Meeting 
(11 August 2004) 
 A-167 
Annex A-7 Closing Statement of the Unite d States – Second Substantive Meeting 
(12 August 2004) 
 A-192 
Annex A-8 Replies by the United States to  Questions posed by the Panel following 
the Second Substantive Meeting (26 August 2004) 
 A-197 
Annex A-9 Comments of the United States on the European Communities' Replies 
to Questions posed by the Panel and to Questions posed by Australia 
following the Second Substantive Meeting (2 September 2004) 
 A-245 
Annex A-10 Comments of the United States on the Reply of the International Bureau 
of WIPO to the Panel's Letter of 9 July 2004 (28 September 2004) 
 A-288 
 WT/DS174/R/Add.1 
Page A-2  
 
 ANNEX A-1 
 
UNITED STATES' RESPONSE TO THE EUROPEAN COMMUNITIES' 
REQUEST FOR A PRELIMINARY RULING  
(15 March 2004) 
 
 
TABLE OF CONTENTS 
 
I. INTRODUCTION ................................................................................................................... ....................3  
II. STATEMENT OF  FACTS............................................................................................................. .............3  
III. THE REQUIREMENTS OF DSU ARTICLE 6.2.....................................................................................4  
IV. THE EC'S ASSERTION THAT THE US PA NEL REQUEST DOES NOT IDENTIFY THE 
"SPECIFIC MEASURES AT ISSUE" IS INCORRECT ........................................................................5  
A. IN CITING REGULATION 2081/92,  THE US PANEL REQUEST HAS IDENTIFIED THE "SPECIFIC 
MEASURES AT ISSUE " ............................................................................................................................5  
B. IN IDENTIFYING REGULATION 2081/92  "AND ITS RELATED IMPLEMENTING AND ENFORCEMENT 
MEASURES ", THE US PANEL REQUEST IDENTIFIED THE "SPECIFIC MEASURES AT ISSUE " .....................7  
V. CONTRARY TO THE EC'S ALLEGATIONS, THE US PANEL REQUEST PROVIDES A 
BRIEF SUMMARY OF THE LEGAL BASIS OF THE COMPLAIN T SUFFICIENT TO 
PRESENT THE PRO BLEM CLEA RLY ..................................................................................................9  
A. THE US PANEL REQUEST PROVIDES A BRIEF SUMMARY OF THE LEGAL BASIS OF THE COMPLAINT 
SUFFICIENT TO PRESENT THE PROBLEM CLEARLY .................................................................................9  
1. Citations to specific WT O agreement provisions .....................................................................9  
2. Narrative de scription .......................................................................................................... ........9  
3. Attendant circumstances ........................................................................................................ ..10 
B. THE EC'S REAL CRITICISM OF THE US PANEL REQUEST IS THAT IT DOES NOT SET FORTH THE US 
ARGUMENTS , WHICH IS NOT REQUIRED BY ARTICLE  6.2....................................................................10  
VI. THE US PANEL REQUEST DOES NOT PREJ UDICE THE ABILITY OF THE EC TO 
DEFEND ITSELF.................................................................................................................. ....................13  
VII. CONCLUSION ..................................................................................................................... .....................13  
  WT/DS174/R/Add.1 
 Page A-3 
 
 
 I. INTRODUCTION 
1. The European Communities ("EC") offers no le gitimate basis for its request for a preliminary 
ruling ("EC Request") that the US panel request in  this dispute fails to meet the requirements of 
Article 6.2 of the Understanding on the Rules and Procedures Governing the Settlement of Disputes  
("DSU").  To the contrary, as required by Article 6. 2, the US panel request properly "identif[ies] the 
specific measures at issue and provide[s] a brief summa ry of the legal basis of the complaint sufficient 
to present the problem clearly."  2. The EC would, in contrast, have this Panel require the identification, not of the "specific 
measures", but of the specific aspects  or parts of the measures that the United States intends to raise in 
this proceeding.  The EC would also have this Pane l read into Article 6.2 another requirement that is 
not there and that the Appellate Body has specificall y rejected: a requirement that the United States 
summarize the specific legal arguments to be presente d in the first US submission.  The Appellate 
Body in EC Bananas
1 has already rejected the suggestion that a complaining party must summarize its 
legal arguments in the panel request, a nd this Panel should do so as well.   
 
II. STATEMENT OF FACTS 
3. The United States requested formal dispute se ttlement consultations with the EC concerning 
"the protection of trademarks and geographical i ndications for agricultural products and foodstuffs", 
and, in particular, Regul ation 2081/92, as amended,2 almost five years ago, on June 1, 1999.3  The 
United States and the EC held a first set of consu ltations on July 9, 1999.  In its request, the United 
States stated that Regulation 2081/92 "does not provide national treatment with respect to 
geographical indications, and does not provide sufficien t protection to pre-existing trademarks that are 
similar or identical to a geographical indication." At  no time during this first set of consultations did 
the EC suggest it did not understand th e legal basis for the US complaint. 
 
4. Indeed, over the course of the following f our years, numerous consultations were held 
between representatives of the United States and of the EC concerning, in detail, what the United 
States perceived to be inconsistencies between Regulation 2081/92 and the WTO obligations of the 
European Communities.4 
 5. On April 4, 2003, the United States requested additional consultations with the EC which, 
inter alia , specified that Regulation 2081/92, as am ended, and its related implementing and 
enforcement measures appeared to be inconsistent with the national treatment and most favored nation 
("MFN") obligations of the Agreement on Trade-Related Aspects of Intellectual Property Rights  
("TRIPS Agreement"), with respect to nationals, and the General Agreement on Tariffs and Trade 
                                                     
 
1 Report of the Appellate Body, European Communities – Regime for the Importation, Sale and 
Distribution of Bananas , WT/DS27/AB/R, adopted September 25, 1997 (" EC Bananas "). 
2 Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical indications 
and designations of origin for agricultural products and foodstuffs.   
3 WT/DS174/1. 
4 Letter from Joseph Papovich to Joao Pacheco, dated June 6, 2001, incorporating 20 questions 
concerning Regulation 2081/92 (Exhibit US-1);  Letter from Joseph Papovich to Joao Pacheco, dated August 21, 2001, attaching additional 15 questions (Exhibit US-2);  Letter from Steve Kho to Jean-Jacques Boufflet, dated 
May 19, 2003, enclosing 36 questions for purposes of the May 27, 2003, consultations, and addressing, among 
other issues relative to Regulation 2081: national treatment, most favored nation treatment, exclusivity of trademarks, implementing regulations and enforcement, availability of legal means for interested parties to 
prevent misleading uses of geographical indications, transparency, and definitions of geographical indications 
(Exhibit US-3). These documents from the consultations are relevant because they show that the EC is not in the 
dark, as it claims to be, concerning problems with respec t to Regulation 2081/92.  The claims in this dispute, 
however, are as set forth in the US panel request. WT/DS174/R/Add.1 
Page A-4  
 
 1994  ("GATT 1994"), with respect to goods.
5  On May 19, the United States submitted detailed 
questions to the EC in advance of consultations  that were held on May 27, 2003, which, as noted 
above, addressed issues that are the subject of the panel request.6  Again, at no time during this last set 
of consultations did the EC even suggest it did not  understand the legal basis for the US complaint. 
 
6. The May 27th consultations also failed to resolve the matter.  Consequently, on August 18, 
2003, the United States requested the establishment of a panel, specifically identifying Regulation 2081/92, as amended, and its relate d implementing and enforcement me asures, and providing a brief 
summary of the legal basis of the complaint.  That summary consisted of both a narrative and a 
specific citation to particular paragraphs of  the TRIPS Agreement and the GATT 1994.   
 
III. THE REQUIREMENTS OF DSU ARTICLE 6.2 
7. Article 6.2 of the DSU requires, in relevant part, that a request for the establishment of a 
panel:  
identify the specific measures at issue and pr ovide a brief summary of the legal basis 
of the complaint sufficient to present the problem clearly. 
8. The EC Request contains a number of quotati ons from Appellate Body and panel reports, in 
particular from Korea Dairy
7 and EC Bananas, that explain this provision and emphasize its role and 
importance in dispute settlement.  It has entirely mi ssed, however, one aspect of these reports which is 
critical to the issue now before this Panel:  the key distinction between the claims  – which must be 
included in the panel request – and the arguments  in support of those claims – which need not be 
included.  As the Appellate Body explained in EC Bananas : 
 
In our view, there is a significant difference between the claims  identified in the 
request for the establishment of a panel, which establish the panel's terms of reference 
under Article 7 of the DSU, and the arguments supporting those claims, which are set 
out and progressively clarified in the first written submissions, the rebuttal submissions and the first and second panel meetings with the parties.
8   
9. Furthermore, and contrary to the EC's argu ment at paragraph 37 of its preliminary ruling 
request, the Appellate Body in EC Bananas  made clear that a panel request may adequately state a 
claim if the request simply cites the pe rtinent provision of the WTO agreement: 
 
We accept the Panel's view that it was suffi cient for the Complaining Parties to list 
the provisions of the specific agreements alleged to have been violated without 
setting out detailed arguments as to which specific aspects of the measures at issue relate to which specific provisions of those agreements.
9  
10. The Appellate Body confirmed this reading in Korea Dairy .  In that dispute, the problem with 
the panel request was that it cited too broadly to  Article XIX of the GATT 1994 and various articles 
of the Agreement on Safeguards , all of which contained numerous s ub-articles, so that it was difficult 
to determine which specific obligations in those provisions were at issue.10  The US panel request in 
                                                      
5 WT/DS290/1 /Add.1. 
6 See Exhibit US-3. 
7 Report of the Appellate Body, Korea – Definitive Safeguard Measure on Imports of Certain Dairy 
Products , WT/DS98/AB/R, adopted January 12, 2000 (" Korea Dairy "). 
8 EC Bananas , para. 141.   
9 Id.   
10 The Appellate Body explained:    WT/DS174/R/Add.1 
 Page A-5 
 
 
 this dispute, by contrast, cites to specific provisi ons of the WTO agreements at issue, and cannot be 
said to suffer a similar defect.    11. The EC also fails to note that even if  a panel request is insuffici ently detailed "to present the 
problem clearly," the Panel is not automatically depr ived of jurisdiction over the matter.  Rather, the 
Panel must examine, based on the "particular ci rcumstances of the case," whether the defect has 
prejudiced the ability of the responding party to defe nd itself.  As the Appellate Body explained in 
Korea Dairy : 
 
In assessing whether the European Commun ities' request met the requirements of 
Article 6.2 of the DSU, we consider that, in view of the particular circumstances of 
this case and in line with the letter and spirit of Article 6.2, the European 
Communities' request should have been more  detailed.  However, Korea failed to 
demonstrate to us that the mere listing of the articles asserted to have been violated has prejudiced its ability to defend itself in the course of the Panel proceedings.  
Korea did assert that it had sustained pr ejudice, but offered no supporting particulars 
in its appellant's submission nor at the oral hearing.  We, therefore, deny Korea's appeal relating to the consistency of th e European Communities' request for the 
establishment of a panel with Article 6.2 of the DSU.
11 
12. Therefore, in evaluating claims regarding whether a panel request "presents the problem 
clearly," the Panel must consider the particular ci rcumstances of the dispute, including whether the 
responding party has been prejudiced. 
 13. The EC asserts that, inconsistently with Article  6.2, the US panel request neither (1) identifies 
the specific measures at issue, nor (2) provides a br ief summary of the legal basis of the complaint 
sufficient to present the problem clearly, and that th e EC has thereby been seriously prejudiced.  As 
detailed in the sections that follow, the EC is wrong on all counts.   
 
IV. THE EC'S ASSERTION THAT THE US PANEL REQUEST DOES NOT IDENTIFY 
THE "SPECIFIC MEASURES AT ISSUE" IS INCORRECT  
A. I
N CITING REGULATION 2081/92,  THE US PANEL REQUEST HAS IDENTIFIED THE "SPECIFIC 
MEASURES AT ISSUE " 
14. The EC argues that specifically citing a particular EC regulation is not "sufficiently specific to 
permit an identification of the ‘specific measure [ sic: measures] at issue'."12  The EC argues that the 
complainants should have identified which specifi c aspects of Regulation 2081/92 they intend to 
                                                                                                                                                                     
 
In the present case, we note that the European Communities' request for a panel, after identifying the 
Korean safeguard measure at issue, listed Articles 2, 4, 5 and 12 of the Agreement on Safeguards and 
Article XIX of the GATT 1994.  Article XIX of the GATT 1994 has three sections and a total of five 
paragraphs, each of which has at least one distinct ob ligation.  Articles 2, 4, 5 and 12 of the Agreement 
on Safeguards also have multiple paragraphs, most of which have at least one distinct obligation.  The 
Agreement on Safeguards in fact addresses a comp lex multi-phased process from the initiation of an 
investigation, through evaluation of a number of f actors, determination of serious injury and causation 
thereof, to the adoption of a definitive safeguard m easure.  Every phase must meet with certain legal 
requirements and comply with the legal standards set out in that Agreement.  
Korea Dairy , para. 129. 
11 Id., para. 131.   
12 EC Request, paras. 14 - 15.  The EC quotes Ar ticle 6.2 as requiring id entification of a single 
"measure" at issue, whereas Article 6. 2 refers to the "measures" at issue. WT/DS174/R/Add.1 
Page A-6  
 
 raise, and claims that "it would have easily been  possible for the complainants to provide more 
specific references to individual provisions of Regulation 2081/92."
13  This argument is groundless, 
for several reasons.    15. First, Article 6.2 requires that the complaini ng party identify the "specific measures at issue" 
in its panel request, and the United States has do ne precisely that in identifying EC Regulation 
2081/92, in its entirety.  There is nothing in Article 6.2 which limits the right of complaining parties to 
choose the measures they wish to challenge, and pr evious disputes have c overed a broad range of 
measures.
14  This, in itself, is grounds for rejecting the EC request. 
 
16. Second, the EC suggests that identifyin g EC Regulation 2081/92, which addresses the 
protection of geographic indications and designati ons of origin for agricultural products and 
foodstuffs, is analogous to identifying the entire civil code of another Member.15  E C  R e g u l a t i o n  
2081/92, however, is not like a civil code.  Unlik e a civil code, which addresses a broad range of 
subject matter, including, for example, marriage , adoption, labor, property, contracts and other 
obligations, and antitrust, EC Regulati on 2081/92 addresses one specific subject , i.e., the rules for the 
protection of designations of origin and geographical  indications for certain agricultural products and 
foodstuffs.  Indeed, while it is true, as the EC notes, that EC Regulation 2081/92 includes several 
articles, they all relate to this one subject, and in f act all of these articles are relevant to the US claims 
in this dispute.  
17. Third, the EC offers an "illustrative list" of supposedly distinct "topics" in Regulation 
2081/92.  Apart from the fact that Article 6.2 incl udes no requirement that specific "topics" within a 
measure be identified,
16 Regulation 2081/92 is an integrated whole:  Article 12a, for instance, which 
concerns applications for third country geographical  indications, contains specific cross-references to 
Articles 4, 5, 12, and 15, which in turn cross-refere nce Articles 2, 4, and 6.  And, of course, other 
articles, e.g., addressing definitions, objective, and scope, are implicitly incorporated.  Taking into 
account the integrated nature of EC Regulation 20 81/92, the United States chose, in exercising the 
broad discretion afforded it under Article 6.2, to  identify the whole Regulation as the "specific 
measures at issue."  18. Fourth, the EC quotes from a number of disput es in which the sufficiency of panel requests 
under Article 6.2 was considered, but does not point to any in which the Appellate Body or a panel 
found that identifying a particular law or regulation as a measure, without identifying particular articles of the law or regulation, is insufficient.  For instance, in EC Bananas , both the panel and the 
Appellate Body found a request sufficient when it referred to "a regime for the importation, sale and 
                                                     
 
13 EC Request, para. 22.  The EC Request does not question the inclusion of amendments to Regulation 
2081/92 as part of the measures at issue in the US pa nel request.  The United Stat es therefore assumes that 
whether the inclusion of amendments is sufficien tly specific under Article 6.2 is not at issue. 
14 See, e.g., United States – Measures Affecting the Cross-Border Supply of Gambling and Betting 
Services ("United States Gambling" ), Request for Establishment of a Panel by Antigua and Barbuda, 
WT/DS285/2, in which the cited measures included a range of code sections and constitutional provisions for all 50 US states and several US territories. 
15 EC Request, para. 18. 
16 The EC apparently does not believe itself obligated to identify specific topics within a measure in 
other disputes;  e.g., United States – Tax Treatment for "Foreign Sales Corporations" , WT/DS108 (" US FSC "), 
where the measures identified were sections 921-927 of the US Internal Revenue Code and related measures.  
The cited statutory provisions alone consisted of seven sections with numerous sub-parts, taking up more than 20 pages of the EC's first exhibit.  Further, in Canada – Measures Relating to Exports of Wheat and Treatment 
of Imported Grain , WT/DS276/12, Preliminary Ruling circulated July 21, 2003 (" Canada Wheat" ), in which the 
EC is a third party, the EC stated, at paragraphs 15-16 of its June 4, 2003, comments, that the US identification 
of  "the Canada Grain Act and Canadian grain regulations," without referencing specific articles, was sufficient 
to satisfy the requirements of Article 6.2.  WT/DS174/R/Add.1 
 Page A-7 
 
 
 distribution of bananas established by Regulation 4 04/93 and subsequent EC le gislation, regulations 
and administrative measures ... which implem ent, supplement and amend that regime."17  Indeed, the 
issue in prior disputes regarding the identification of measures at issue has generally been whether 
Article 6.2 requires a citation to a particular law or regulation, or whether simply describing the measure without citation is specific enough.  On  that particular question, the panel in Canada Wheat , 
the only dispute cited by the EC on this issue, noted that it is desirable but unnecessary for panel 
requests to "specify measures of general application – i.e., laws and regulations – by name, date of 
adoption, etc."
18  In this dispute, by contrast, the US panel request specifically cites Regulation 
2081/92 and the EC is arguing that even this "desi rable," although unnecessary, form of identification 
is insufficient.  In short, the EC is seeking to dramatically increase the level of specificity required 
under Article 6.2 in this proceeding without any text ual or other basis, simply to suit its immediate 
interest in this dispute.  19. For the reasons above, the US reference to Re gulation 2081/92 constitutes an identification of 
the specific measures at issue, as required by Article 6.2.  
 
B. I
N IDENTIFYING REGULATION 2081/92  "AND ITS RELATED IMPLEMENTING AND 
ENFORCEMENT MEASURES ", THE US PANEL REQUEST IDENTIFIED THE "SPECIFIC MEASURES 
AT ISSUE " 
20. The EC argues that Australia's identifica tion of "related implementing and enforcement 
measures" falls short of the Article 6.2 requirement to identify the "specific measures at issue."  The 
EC asserts, at footnote 10, that the US panel re quest does not include a reference to "related 
implementing and enforcement measures."  This is in correct.  In paragraph 2 of its panel request, the 
United States defines the measures at issue – Regul ation 2081/92, as amended – to include its related 
implementing and enforcement measures.  Be that as it may, the EC has not challenged this aspect of the US panel request, even after it was pointed ou t at the March 3 organizational meeting that the 
United States used precisely the same formulati on as Australia.  Under these circumstances, it is 
unclear on what basis the EC continues to maintain  its complaint about the Australian panel request. 
 21. In any case, the EC's argument with respect  to Australia's panel request is wrong and ill-
founded.  The EC claims that "related" is a vague term and that many laws and regulations might be 
considered "related."  It also claims that many laws and regulations may be necessary to implement 
and enforce the regulation.  Therefore, the EC pr ofesses ignorance of what measures are at issue.  
This argument is disingenuous.  The Australian pa nel request does not refer to unknown "related 
implementing and enforcement" measures.  It re fers to a specific regulation providing for the 
protection of geographical indications in the EC and its
 related implementing and enforcement 
measures.  The identification of these measures is spec ified through the referenc e to its relationship to 
Regulation 2081/92, i.e., those measures that enforce and implement Regulation 2081/92.  As noted 
above, the Appellate Body found less sp ecific language to be adequate in EC Bananas : "a regime for 
                                                      
17 EC Bananas , para. 140. 
18 Preliminary Ruling of the Panel, Canada – Measures Relating to Exports of Wheat and Treatment of 
Imported Grain , WT/DS276/12, circulated on July 21, 2003 (" Canada Wheat") , para. 19:   
 
We note that the United States' panel request refers to "laws" and "regulations", yet does not specify the relevant laws and regulations by name, date of adoption, etc.  We consider that it is desirable for 
Members to be as specific as possible in identifying  measures of general application, including by 
indicating their name and date of adoption.  However, by its terms, Article 6.2 does not require that panel requests explicitly specify measures of general application – i.e., laws and regulations – by name, 
date of adoption, etc.  Therefore, we consider that  the fact that the United St ates has not specified the 
relevant laws or regulations by name, date of adoption, etc. does not necessarily render the panel request inconsistent with Article 6.2. 
 WT/DS174/R/Add.1 
Page A-8  
 
 the importation, sale and distribution of bananas est ablished by Regulation 404/93 and subsequent EC 
legislation, regulations and administrative measur es ... which implement, supplement and amend that 
regime."
19  The EC itself adopted a similar approach in US FSC  when it identified the measures as 
"sections 921 - 927 of the Internal Revenue C ode and related measures establishing special tax 
treatment for ‘Foreign Sales Corporations'."20 
 
22. Finally, the EC is in a poor position to be pleading that the "related implementing and 
enforcement measures" are not specified.  In tr ying to understand these measures fully during the 
course of consultations almost one year ago, the ve ry first category of information the United States 
and Australia requested from the EC was with respec t to "Implementing Regulations."  In particular, 
the United States asked for a list of  "all EC rules, regulations or other measures implementing or 
related to EC Regulation 2081/92" a nd copies of all such "relevant measures."  In addition, the United 
States asked several specific questions about re levant member State implementing regulations, 
including those related to member State inspection st ructures, and asked for copies of all such relevant 
measures.  The EC was utterly unresponsive to th is request during the consultations, and never 
provided citations to a single implementing measur e in response to this request, despite numerous 
opportunities to do so.  Article 4.10 of the DSU stat es that Members will engage in dispute settlement 
procedures in good faith in an attempt to resolve th e dispute.  More specifically, Article 4.3 of the 
DSU obliges the Members to enter into consultations in good faith. Given the failure of the EC itself 
to identify Regulation 2081/92's implementing and enforcement measures by citation, this Panel 
should require no more specificity of the United St ates than the EC was w illing to offer the United 
States.  
 23. The EC, in arguing that the identification of "related implementation and enforcement 
measures" is unspecific, refers  to the preliminary ruling in Canada Wheat , where, in paragraphs 20 
and 24, the panel found that, "in the absence of an e xplicit identification, sufficient information must 
be provided in the request for establishment of the panel itself that effectively identifies the precise 
measures at issue."
21  The Canada Wheat  panel found there was not sufficient information where the 
panel request contained contradictory references which obscured the content and meaning of the 
"laws and regulations" referred to in the request.22  However, that panel also found that a similarly 
broad reference to "actions" was clear, in context, because the request stated that these actions related 
to "purchases or sales involving wheat exports."23 
 
24. In this dispute, there are no contradictory references, and there is no uncertainty as to the 
content or the nature of the "implementing and enforcement measures" at issue:  they are the 
implementing and enforcement measures that are "rel ated" to Regulation 2081/92, on the protection of 
geographical indications and designations of orig in for agricultural products and foodstuffs.   
 
25. In summary, both the Australian and the US panel requests specifically identify the 
"implementing and enforcement measures" at issue in  this dispute, consistent with Article 6.2.  
 
                                                      
19 EC Bananas , para. 140. 
20 WT/DS108/2, July 9, 1998. 
21 EC Request, paras 25 and 26. 
22 Canada Wheat, para. 24. 
23 Canada Wheat, para. 26.  WT/DS174/R/Add.1 
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 V. CONTRARY TO THE EC'S ALLEGATIONS, THE US PANEL REQUEST 
PROVIDES A BRIEF SUMMARY OF TH E LEGAL BASIS OF THE COMPLAINT 
SUFFICIENT TO PRESENT THE PROBLEM CLEARLY 
A. THE US PANEL REQUEST PROVIDES A BRIEF SUMMARY OF THE LEGAL BASIS OF THE 
COMPLAINT SUFFICIENT TO PRESENT THE PROBLEM CLEARLY  
26. The United States does provide a brief summary of the legal basis of the complaint sufficient 
to present the problem clearly, as required by Article 6.2.  It both lists the specific provisions of the 
TRIPS Agreement and the GATT 1994 alleged to be violated, and pr ovides, in addition, a brief 
textual explanation of the basis of the complaint.    1. Citations to specific WTO agreement provisions 
27. The Appellate Body has made clear on sever al occasions, directly contrary to the EC's 
assertion in paragraph 37 of its request, that a panel request may adequately summarize the legal basis 
of the complaint under Article 6.2 by simply citing the pertinent provisions of the WTO Agreement.
24  
The EC cites Korea Dairy , in which the Appellate Body stated  that there may be circumstances in 
which a "listing of treaty articles would not satisfy the standard of Article 6.2."25  But in that 
proceeding the articles cited had multiple paragr aphs, many of which had their own distinct 
obligations: for instance, the panel request cite d Article XIX of the GATT 1994, containing three 
sections and five paragraphs, each with at least one distinct obligation,  and Article 12 of the 
Safeguards Agreement, which spans tw o pages and contains 11 paragraphs.26   
 
28. By contrast, the US panel request in this dispute lists 17 specific provisions of the TRIPS 
Agreement and two specific provisions of the GATT 199 4.  Where an article consisted of more than 
one paragraph, the US panel request specifica lly identified the particular paragraph number.27  
Generally, each of these paragraphs consists of  a single obligation.  Unlike in the case of  Korea 
Dairy , there are no circumstances in this dispute that  would render citation to the relevant specific 
provision of the WTO agreement insufficient under Article 6.2. 
 
2. Narrative description 
29. Moreover, the US panel request does not rest solely on specific citation to particular WTO 
obligations.  It also includes a brief narrative descr iption of the legal basis for the complaint, adding 
clarity to the summary.  For instance, it summarizes that, in the view of the United States, Regulation 
2081/92 does not provide national or most favored na tion treatment to goods or  nationals of other 
WTO Members, and that Regulation 2081/92 dimini shes legal protection for trademarks (with a 
specific illustrative reference to the right to prevent confusing uses of an identical or similar sign and 
adequate protection against invalidation).  It also st ates, as a brief summary of the legal basis of the 
complaint, in conjunction with specifically cited WTO agreement provisions, that Regulation 2081/92 
does not provide the legal means for interested par ties to prevent the misleading use of a geographical 
indication, defines geographical indications in a manner inconsistent with the TRIPS Agreement,  is 
not sufficiently transparent, and does not provide fo r adequate enforcement procedures.  Contrary to 
the EC's argument at paragraph 42 of its request, there is no requirement under Article 6.2 that each 
                                                      
24 E.g., EC Banana s, para. 141; Korea Dairy , para 124. 
25 Korea Dairy , para. 124, cited in EC Request, para. 36.  The EC's conclusion, at paragraph 37, that 
identification of the treaty provisions "is a necessary, but not sufficient condition  under Article 6.2 DSU" 
(emphasis in original) is a patently incorrect reading of Korea Dairy .   
26 Korea Dairy , para. 124. 
27 Except for GATT 1994 Article I, which consists of one paragraph followed by several exceptions. WT/DS174/R/Add.1 
Page A-10  
 
 part of the narrative be specifically linked to par ticular WTO provisions, nor does the EC point to any 
disputes in which this was required.   30. As stated above, the citation to specific WTO obligations in the US panel request is sufficient 
to summarize the legal basis for the complaint un der Article 6.2.  The narrative is an additional 
description of the legal basis.  Therefore, there is no legitimate foundation in this dispute for the EC to 
assert that the US panel request violated the second prong of Article 6.2.  
3. Attendant circumstances  
31. In addition to (1) the specific citation to  WTO obligations, which alone is a sufficient 
summary of the legal basis of the complaint, a nd (2) the narrative description, which additionally 
describes the legal basis, the attendant circumstan ces surrounding this panel request make clear that 
the panel request's summary of the legal basis of the complaint is sufficient and presents the problem 
clearly.  The Appellate Body, in Korea Dairy , clarified that the sufficiency of the panel request can be 
judged in light of these circumstances.
28  
 
32. There is a long history of consultations in th is dispute.  The United States requested formal 
consultations on June 1, 1999, and the first set of consultations was held almost five years ago, on 
July 9, 1999, and continued through the last set of  formal consultations on May 27, 2003.  As noted 
earlier, and as set forth in further detail below, as a result of these consultations it is abundantly clear 
that the EC understands the legal basis of the US complaint. 
 
B. THE EC'S REAL CRITICISM OF THE US PANEL REQUEST IS THAT IT DOES NOT SET FORTH THE 
US ARGUMENTS , WHICH IS NOT REQUIRED BY ARTICLE  6.2 
33. Previous panels and the Appe llate Body have been very careful to distinguish between the 
claims that must be made in a panel request under Article 6.2 -- i.e., the brief summary of the legal 
basis  for the complaint sufficient to present the problem clearly -- and the arguments  supporting those 
claims.  The claims must be set forth in the pane l request.  The arguments do not.  As the Appellate 
Body stated in EC Bananas:   
 
We accept the Panel's view that it was suffi cient for the Complaining Parties to list 
the provisions of the specific agreements alleged to have been violated without 
setting out detailed arguments as to which specific aspects of the measures at issue 
relate to which specific provisions of tho se agreements.  In our view, there is a 
significant difference between the claims  identified in the request for the 
establishment of a panel, which establis h the panel's terms of reference under 
Article 7 of the DSU, and the arguments supporting those claims, which are set out 
and progressively clarified in the first written submissions, the rebuttal submissions 
and the first and second panel meetings with the parties.29   
34. In this dispute, the EC is not faulting the United States for failing to set out the legal basis  for 
the complaint.  It is faulting the United States, incorrectly, for not including its arguments  in support 
of that basis.30  
                                                      
28 Korea Dairy , para. 124. 
29 EC Bananas , para. 141.   
30 In criticizing the specificity of the "measures" unde r Article 6.2, the EC argues incorrectly that the 
lack of citation to individual provisions of Regulation 2081/92 "does not permit the EC to understand which 
specific aspects  among those covered by Regulation 2081/92 the complainants intend to raise . . ." EC Request, 
para. 22 (emphasis added).  Article 6.2 requires an iden tification of the specific measures at issue; it does not 
require identification of the specific "aspect" of the measures.  In fact, the EC's argument appears to be  WT/DS174/R/Add.1 
 Page A-11 
 
 
  
35. With respect to national treatment, for exampl e, the EC complains that the US panel request 
does not specify which provision or aspect of Regul ation 2081/92 violates the EC's national treatment 
obligations, and "in which way such a violation is deemed to occur."31  This is precisely what the 
Appellate Body in EC Bananas  found was not  required.  The United States will lay out in detail the 
specific ways in which Regulation 2081/92 fails to  provide national treatme nt to non-EC nationals 
and non-EC goods, but will do so in its submissions, as part of its arguments supporting the claim that 
Regulation 2081/92 denies national treat ment to non-EC nationals and goods.32  
 36. In other words, the legal basis for the complain t, made clear in the US panel request, is that 
the EC's regulation for the protection of certain geogr aphical indications is inconsistent with specific 
national treatment obligations in the TRIPS Agre ement, the Paris Convention, and the GATT 1994.  
The detailed arguments as to how specific aspects of  Regulation 2081/02 are inconsistent with these 
obligations will be the subject of the arguments to be presented in future US submissions. 
 
37. Similarly, with respect to MFN treatment, th e EC complains that the panel request does not 
specify which provision of Regulation 2081/92 violates MFN obligations, how such a violation occurs, which WTO Members are being denied favorable treatment, what this more favorable treatment is, and how it is conferre d.  Such detailed explanations and argumentation clearly go beyond 
the requirements for a brief summary of the legal b asis for the complaint pursuant to Article 6.2, and 
instead fall squarely into the category of arguments in support of the claim that the regulation does not 
provide most favored nation treatment with r espect to goods and nationals of WTO Members.
33 
 38. With respect to "legal protection for tr ademarks," the EC acknowledges that Regulation 
2081/92 addresses the issue of conflicts between trad emarks and geographical indications in three 
paragraphs of Article 14, and in  Article 7(4), all of which can and do have significant negative 
implications for trademark rights provided for under the TRIPS Agreement.
34  The EC further claims 
that Regulation 2081/92 provides "specific solutions" to the various conflicts between trademarks and 
geographical indications.35  By engaging in the substance of th e US claims in such detail in its 
preliminary ruling request, it is obvious that the US summary of the legal basis of the complaint was 
                                                                                                                                                                     
confusing the Article 6.2 requirement that the measures be  identified with the requirement that the legal basis be 
summarized ( i.e., the claims).  Even with respect to the cl aims, however, the Appellate Body specifically 
rejected this argument in the paragraph of EC Bananas quoted above. This issue is discussed in further detail in 
this section, but suffice it to say that the EC cannot fairly claim to be in the dark about what aspects of 
Regulation 2081/92 are at issue.  See, e.g.,  footnote 32 below. 
31 EC Request, para. 44. 
32 The claims are clear from the US panel request.  Bu t, in addition, the EC cannot fairly claim to be 
unaware of the problem presented, in light of the long history of consultations.  For instance, several of the 
questions put to the EC in consultations question why non-EC nationals cannot register their own geographical 
indications for originating products, and why they are faced with various problematic provisions in Regulation 2081/92 that do not apply to EC nationals.  See,  e.g., May 19, 2004, Consultation Questions, questions 7-25 
(Exhibit US-3);  indeed, the EC Request itself attach es, as EC Exhibits 2 and 3, the minutes of the DSB 
meetings in which the United States described some of the specific problems with Regulation 2018/92, including with respect to national and most favored nation treatment, among other issues.  EC Exhibit 2, 
para. 72; EC Exhibit 3, paras. 28 and 29. 
33 With respect to this issue, too, the EC cannot fairly claim to be in the dark.  Several questions were 
raised in consultations about why nationals and products of some WTO Members --  i.e., those that have a 
system of geographical indi cation protection that is equivalent to th e EC system -- have rights and receive 
protections that other WTO Members do not.  See, e.g. , May 19, 2004, Consultation Questions, questions 7-25 
(Exhibit US-3);  EC Exhibit 2, para. 72; EC Exhibit 3, paras. 28-29. 
34 EC Request, paras 46-48. 
35 Yet it is these "solutions", among other things, that are at issue, particularly in light of the exclusive 
right of the registered trademark holder, under Article 16 .1 of the TRIPS Agreement, to prevent the use of an 
identical or similar sign that is likely to confuse. WT/DS174/R/Add.1 
Page A-12  
 
 sufficient to present the problem clearly.
36  The EC's desire to "understand which specific problems 
the United States wishes to raise" is a request fo r argumentation that is appropriate for the first 
submission, but not for a panel request, a point that the EC has itself noted in other disputes.37  
 39. With respect to Regulation 2081/92's failure to "provide legal means for interested parties to 
prevent the misleading use of a geographical indication," the EC claims that Regulation 2081/92 
contains detailed provisions regarding the protection of registered geographical indications that do 
provide such means.  Again, the EC is interest ed in engaging in argumentation regarding the US 
claims, prior to the US first submission.  And ag ain, that the United States did not provide such 
argumentation in its panel request is not a violation of Article 6.2.  
 
40. With respect to the differences between Re gulation 2081/92's defin ition of "geographical 
indication" and that in the TRIPS Agreement, the EC is disingenuous to argue that the United States 
does not explain the differences between the two defi nitions.  The TRIPS Agreement definition is in 
Article 22.1 of the TRIPS Agreement; the Regulati on definition is in Article  2.2(b) of Regulation 
2081.  The differences between them are obvious, and speak for themselves.  As for the nature of the 
breach, this is properly a subject for arguments in the submissions of the parties.  Again, however, it is 
disingenuous for the EC to argue that it does not understand the US claim.  As the United States 
explained to the EC during consultations, the TR IPS Agreement contains obligations to protect 
geographical indications, as defined in the TRIPS Agreement, yet Regulation 2081/92, which is how 
"Community protection of ... geogra phical indications of agricultural products and food stuffs shall be 
obtained", offers protection to an apparently different category of geographical indications.  
Differences in coverage therefore raise obvious qu estions of consistency with TRIPS Agreement 
obligations.
38 
 41. The EC arguments with respect to transpar ency and enforcement procedures suffer from the 
same defects: the EC is attempting to engage in argumentation on the substance of the claims -- for 
instance, asserting that Regulation 2081/92 is tran sparent, and faulting the United States for not 
detailing how it is not transparent -- instead of tryi ng to make out a case that the legal basis is not 
sufficiently summarized.  42. The above are examples of how the EC, in alleging that the US panel request does not 
"provide a brief summary of the legal basis of the complaint sufficient to present the problem clearly", 
is in fact arguing that the United States has not adequately set out its arguments  in support of those 
claims.  It is clear from the face of the panel request, particularly in light of the attendant circumstances of the consultations, that the US pa nel request does provide a sufficient brief summary 
of the legal basis of the complaint that presents the problem clearly.  
 
                                                     
 
36 Note also the detailed discussions that occu rred on this subject at the consultations.  See, e.g.,  
May 19, 2004, Consultation Questions,  "Article 14 --  Exclusivity of Trademar ks", questions 29-36, and 
"Article 13" , questions 27 - 28 (Exhibit US-3).   
37 In United States Gambling , the EC itself criticized the US request for an Article 6.2 preliminary 
ruling in its October 24, 2003, comments, arguing at paragr aph 16 that the issue raised by the United States "was 
strictly connected with the substance of the case, which is legally and factually rather complex" and, therefore, 
"not suited for adjudication through a summary preliminary ruling proceeding brought under article 6.2 of the DSU."  Further, the EC criticized Ko rea's preliminary ruling request in Korea -- Measures Affecting Trade in 
Commercial Vessels , WT/DS273, characterizing Korea' s objections to the panel request as "an ill-fated attempt 
to have the Panel make findings on substantive legal issues that should be at issue during the regular Panel phase, not at the preliminary stage." 
38 See, e.g. , May 19, 2004, Consultation Questions, "Definitio n of GIs", questions 4 - 6 (Exhibit US-3).  WT/DS174/R/Add.1 
 Page A-13 
 
 
 VI. THE US PANEL REQUEST DOES NOT PR EJUDICE THE ABILITY OF THE EC 
TO DEFEND ITSELF 
43. The EC argues that the Appellate Body has "a ttached importance" to the question of whether 
a responding Party has suffered prejudice as a result of any deficiencies with respect to Article 6.2.  
More to the point, however, in Korea Dairy , the Appellate Body denied Korea's Article 6.2 claim in 
toto because, although it had asserted prejudice,  Korea offered no supporting particulars.39 
 44. The EC's argument that it is prejudiced by the US panel request is nothing more than a restatement of its argument, refuted above, that the request is insufficiently detailed with respect to 
actual arguments to support the legal basis of the complaint.  In light of the Appellate Body's 
reasoning in Korea Dairy , such a mere restatement is plainly insufficient to establish prejudice.  If 
lack of detail in the panel request automatically  meant "prejudice", there would be no need for a 
"prejudice" analysis.  Even if the EC had succeeded  in demonstrating that the US panel request does 
not meet the requirements of DSU Article 6.2, which it has not, the EC has offered nothing to suggest that it has been prejudiced.   
 
45. The EC argues, at paragraph 71, that the Unite d States made a similar "prejudice" argument in 
US Lamb ,
40 and states that the same standard should be applied in the present case.41  Of course, if this 
Panel does adopt the same standard as in the US Lamb  dispute, it will reject the EC's request, 
consistent with the US Lamb  panel's rejection of the US argum ent and its finding that the panel 
request in US Lamb  was consistent with Article 6.2.42 
 
46. The EC speculates, at paragraph 73 of its request, that either both co-complainants are 
conspiring to leave the EC in the dark, or both are unsure of the case they are intending to bring.  The 
truth is more mundane: Article 6.2 requires only a brief summary of the legal basis  for the complaint 
sufficient to present the problem clearly.  It does not, as explained above, require a preview of the 
arguments  that will be submitted later during the course of the panel proceedings. 
 
VII. CONCLUSION 
47. For the reasons stated above, the EC's argumen ts in support of its request for a preliminary 
ruling that the US panel request does not meet the requirements of Article 6.2 are without merit.  Accordingly, the Panel should reject that request. 
                                                     
 
39 Korea Dairy , para 131. 
40 Report of the Panel, United States – Safeguard Measures on Imports of Fresh, Chilled or Frozen 
Lamb Meat from New Zealand and Australia , WT/DS178/R, adopted May 16, 2001 (" US Lamb" ). 
41 EC Request, para. 72. 
42 US Lamb , para. 5.53. WT/DS174/R/Add.1 
Page A-14  
 
 ANNEX A-2  
 
FIRST WRITTEN SUBMISSION OF THE UNITED STATES  
 
(23 April 2004) 
 
 
TABLE OF CONTENTS 
 
TABLE OF RE PORTS ............................................................................................................... .......................16  
I. INTRODUCTION ................................................................................................................... ..................17  
II. PROCEDURAL HISTOR Y............................................................................................................. .........18  
III. FACTS .......................................................................................................................... ..............................18  
IV. THE EC GI REGULATION IS INCONS ISTENT WITH THE EC 'S OBLIGATIONS 
UNDER THE TRIPS AGREEMEN T AND THE GATT 1994..............................................................23  
A. THE EC GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS TO PROVIDE NATIONAL 
TREATMENT ............................................................................................................................... ..........23  
1. The EC GI Regulation is inconsistent with  the EC's national treatment obligations 
with respect to nationals of other WT O Members under the TRIPS Agreement and 
the Paris Convention........................................................................................................... .....23  
(a) The national treatment obligation under the TR IPS Agreement and the Paris Conv ention ................23  
(i) Introduction................................................................................................................23  
(ii) Article 2 of the Paris Convention ...............................................................................24  
The ordinary meaning of the terms in Article 2 of the Pa ris Conven tion..................................24  
Relationship between Article 2(1) of the Paris Convention and conditioning national 
treatment on reciprocit y and equivalence..................................................................................25  
(iii) Article 3.1 of the TRIPS Agreement............................................................................26  
(iv) Conclusion with respect to Article 2 of the Paris Convention and Article 3.1 of 
the TRIPS Agreement.................................................................................................28  
(b) Non-EC nationals are accorded less favorable  treatment than EC nationals under the GI 
Regulation with respect to the registration an d protection of geogra phical indica tions. ....................29  
(i) Introduction................................................................................................................29  
(ii) The EC GI Regulation accords less favorable treatment to non-EC Nationals 
with respect to registration and consequent protection .............................................30  
Non-EC National are accorded less favorable treatment with respect to the registration 
and protection of their non-EC-based GIs than  EC nationals are with respect to their 
EC-based GIs ................................................................................................................... .........31  
The national treatment obligation in the cont ext of goods is instructive as to the GI 
Regulation's inconsistency with the national treatment obligations of the TRIPS 
Agreement and Pari s Convent ion..............................................................................................33  
The GI Regulation's TRIPS-inconsistent c onditions for permitting the registration and 
protection of GIs may be viewed as "ext ra hurdles" faced by  non-EC na tionals ......................34  
The EC GI Regulation requires non-EC nationa ls to become established in the EC as a 
condition of obtaining GI protection, contrary  to Article 2 of th e Paris Conve ntion.................36  
(c) The EC GI Regulation accords less favorable tr eatment to non-EC nationa ls with respect to 
opportunity to object to the registratio n of GIs ............................................................................... ...36 
2. The EC GI Regulation is inconsistent with  the EC's national treatment obligations 
with respect to goods of other WTO Members under the GATT 1994 ...............................38  
(a) The imported and domestic products ar e "like".................................................................................. 39 
(b) The GI Regulation affects the "internal sale, offering for sale, purch ase, transportation, 
distribution or use" of  the importe d produc t................................................................................... ....39 
(c) The imported product is accorded "less favorable  treatment" than the domestic like product............40  
B. THE EC'S GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS TO PROVIDE MOST 
FAVORED NATION TREATMENT ............................................................................................................41  
1. The EC GI Regulations is inconsistent  with the EC's most favored nation 
obligations with respect to other WT O Member's nationals under the TRIPS 
Agreement...................................................................................................................... ...........42   WT/DS174/R/Add.1 
 Page A-15 
 
 
 (a) The TRIPS Agreement requires that any advantag e, favor, privilege or immunity granted to 
nationals of any other country be accorded immediately and unconditionally to the nationals 
of all other WTO Members ....................................................................................................... .........42  
(b) The EC GI Regulation grants significant adva ntages, favors, privileges, and immunities to 
nationals of some countries that it does not accord at all to nationals of WTO Members..................43  
2. The EC GI Regulation is inconsistent with  the EC's most favored nation obligations 
with respect to goods of other WTO Members under the GATT 1994 ...............................45  
(a) Article I:1 of the GATT 1994 requires that an y advantage, favor, privilege, or immunity 
granted to any product originating in any ot her country be accorded immediately and 
unconditionally to the like product originating in the territories of all other WTO Members............45  
(b) The EC GI Regulation grants significant adva ntages, favors, privileges, and immunities to 
agricultural products and foodstuffs  originating in some countries  that it does not accord to 
like products originating in the te rritories of all WTO Memb ers .......................................................45  
C. THE EC GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS UNDER ARTICLE  16.1  OF 
THE TRIPS  AGREEMENT ......................................................................................................................46  
1. Introduction................................................................................................................... ............46  
2. The US argument in light of the relatio nship between trademark rights and GI 
rights......................................................................................................................... .................47  
3. Article 16.1 of the TRIP S Agreement requires Members to  provide the owners of 
registered trademarks with the exclusive ri ght to prevent all third parties from 
using identical or similar signs resulti ng in a likelihood of confusion..................................48  
(a) Ordinary meaning of the terms in Article 16.1 .................................................................................. .48 
(b) The context of the te rms in Article 16.1 ....................................................................................... ......49  
(c) The object and purpose of the TRIPS Agr eement with respect to Article 16.1 ..................................50  
(d) Conclusion with respect to th e meaning of Ar ticle 16.1.....................................................................52  
4. Contrary to Article 16.1 of the TRIPS Ag reement, the EC GI Regulation does not 
permit owners of registered trademarks to  exercise their Article 16.1 exclusive 
rights to prevent confusing uses ..............................................................................................5 2 
(a) The text of the EC GI Regulation makes clear that owners of registered trademarks are not 
permitted to exercise th eir Article 16.1 rights ................................................................................ ....52 
(b) The EC's explanations of the GI Regulati on and the circumstances surrounding its coming 
into force confirm that the GI Regulation prev ents owners of registered trademarks from 
exercising their Artic le 16.1 rights........................................................................................... ..........54  
5. Conclusion with respect to the GI Regulation's inconsistency with Article 16.1 .................56  
D. THE EC GI REGULATION IS INCONSISTENT WITH ARTICLE  22.2  OF THE TRIPS  AGREEMENT .................56  
E. THE EC GI REGULATION IS INCONSISTENT WITH THE EC'S ENFORCEMENT OBLIGATIONS UNDER 
THE TRIPS  AGREEMENT ......................................................................................................................58  
F. THE EC GI REGULATION IS INCONSISTENT WITH ARTICLE  65.1  OF THE TRIPS  AGREEMENT .................59  
V. CONCLUSION ..................................................................................................................... .....................59  
 WT/DS174/R/Add.1 
Page A-16  
 
 TABLE OF REPORTS 
 
Short Form Full Citation 
Belgian Family Allowances  GATT Panel Report, Belgian Family Allowances, BISD 1S/59, adopted 
7 November 1953. 
Canada – Patent Term  Panel Report, Canada – Term of Patent Protection, WT/DS170/R, adopted 
12 October 2000.  
Canada – Autos  Panel Report, Canada – Certain Measures Affecting the Automotive Industry, 
WT/DS139/R, WT/DS142/R, adopted 19 June 2000, as modified by the 
Appellate Body Report.  
Canada – Autos  Appellate Body Report, Canada – Certain Measures Affecting the Automotive 
Industry, WT/DS139/AB/R, WT/DS142/AB/R, adopted 19 June 2000.  
Chile – Alcohol  Panel Report, Chile – Taxes on Alcoholic Beverages, WT/DS87/R, WT/DS110/R, 
adopted 12 January 2000, as modified by the Appellate Body Report.  
Chile – Alcohol  Appellate Body Report, Chile – Taxes on Alcoholic Beverages, WT/DS87/AB/R, 
WT/DS110/AB/R, adopted 12 January 2000.  
EC – Asbestos  Appellate Body Report, EC – Measures Affecting Asbestos and Asbestos 
Containing Products, WT/DS135/AB/R, adopted 16 April 2001.  
EEC – Parts and 
Components  GATT Panel Report, EEC – Regulations on Imports of Parts and Components, 
BISD 37S/132, adopted 16 May 1990. 
EC – Sardines  Appellate Body Report, EC–Trade Description of Sardines, WT/DS231/AB/R, 
adopted 23 October 2003.  
India – Autos  Panel Report, India–Measures Affecting the Automotive Sector , WT/DS/146/R, 
WT/DS175/R, adopted 5 April 2002.  
Indonesia – Autos  Panel Report, Indonesia–Certain Measures Affecting the Automobile Industry, 
WT/DS54/R, WT/DS55/R, WT/DS59/R, WT/DS64/R, adopted 23 July 1998.  
Italian Agricultural 
Machinery  GATT Panel Report, Italian Discrimination Against Imported Agricultural 
Machinery, L/833 BISD, 7S/60, adopted 23 October, 1958.  
Japan – Alcohol   Appellate Body Report, Japan  – Taxes on Alcoholic Beverages, WT/DS8/AB/R, 
WT/DS10/AB/R, adopted 1 November, 1996.  
Korea – Alcohol  Appellate Body Report, Korea – Taxes on Alcoholic Beverages, WT/DS75/AB/R, 
WT/DS84/AB/R, adopted 17 February 1999.  
Korea – 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.  
US – FSC 
(Article 21.5–EC)  Panel Report, United States – Tax Treatment for “Foreign Sales Corporations” –
Recourse to Article 21.5 of the DSU by the European Communities , 
WT/DS108/RW, adopted 19 January 2002.  
US – Malt Beverages  GATT Panel Report, United States – Measures Affecting Alcoholic and Malt 
Beverages, DS23/R, BISD 39S/206, adopted 19 June 1992.  
US – Section 211  Panel Report, United States – Section 211 Omnibus Appropriations Act of 1998, 
WT/DS176/R, adopted 1 February 2002, as modified by the Appellate Body 
Report.  
US – Section 211  Appellate Body Report, United States – Section 211 Omnibus Appropriations Act 
of 1998, WT/DS176/AB/R, adopted 1 February 2002.  
US – Section 337  GATT Panel Report, United States – Section 337 of the Tariff Act of 1930 , BISD 
36S/345, adopted 7 November 1989.   WT/DS174/R/Add.1 
 Page A-17 
 
 
 I. INTRODUCTION 
1. The EC's Geographical Indications ("GI") Regulation1 sets up a regime for the protection of 
geographical indications in order to realize and maxi mize what it considers to be substantial benefits 
for those producing and selling qualified agricu ltural products and f oodstuffs in the EC.  
Unfortunately, the Regulation suffers from significant  defects.  First, while making these benefits 
easily available to EC nationals and products , it erects very significant – indeed, nearly 
insurmountable – barriers against many  non-EC nationals and products.  
 2. Second, and importantly for all
 owners of registered trademarks – both US and European – 
the GI Regulation grants this protection at the expen se of trademark rights that the EC is specifically 
obliged to guarantee under the TRIPS Agreement.2   
 3. The EC must, under the TRIPS Agreement, offer certain protections for geographical 
indications.  It is not, however, permitted to do so in a manner that discriminates against non-EC 
nationals and products, nor is it pe rmitted to do so at the expense of  its TRIPS Agreement obligations 
with respect to trademarks.    
 4. This submission details how the EC's GI Regulation is inconsistent with the TRIPS 
Agreement and the GATT 1994
3 because of its discrimination agai nst non-EC nationals and products.  
It is inconsistent with the national treatment obligations of the TRIPS Agreement and the Paris 
Convention,4 both of which require national treatment as to  "nationals" of other WTO Members.  It is 
also inconsistent with the national treatment ob ligations of the GATT 1994 with respect to products 
from other WTO Members.  Further, the GI Regulati on is inconsistent with the obligation to provide 
most favored nation ("MFN") treatment with respect  to nationals of other WTO Members, under the 
TRIPS Agreement, and with respect to products of other WTO Members, under the GATT 1994.    
 
5. Next, and directly contrary to the express ob ligations of the TRIPS Agreement with respect to 
trademarks, the EC's GI Regulation denies the owner of a registered trademark his exclusive right to prevent all third parties from using similar or identic al signs for goods or services that are identical or 
similar to those covered by the trademark registra tion – including geographical indications – where 
such use would result in a likelihood of confusion.  For example, the owner of a registered trademark 
must, under the TRIPS Agreement, be able to take action against another producer selling an identical 
product, labeled with an identical name (protect ed as a geographical indication after the trademark 
registration), on the same shelf as the trademarked pr oduct.  That owner cannot take such action under 
the EC GI Regulation.  6. Finally, as detailed further below, the EC GI  Regulation fails to provide interested parties 
with the legal means to protect their geographical indications, as required by the TRIPS Agreement.  
                                                     
 
1 i..e., the measure at issue in this dispute:  Council Regulation (EEC) No. 2081/92 of July 14, 1992  on 
the protection of geographical indications and designations of origin for agricultural products and foodstuffs, as 
amended, and its related implementing and enforcement m easures.  In this submission, references to the "GI 
Regulation" or the "EC GI Regulation" are references to this measure, which includes both Regulation 2081 and 
its related implementing and enforcement measures.  Refere nces to particular article s of the GI Regulation are 
references to Regulation 2081/92 itself, as most recently amended, provided as Exhibit COMP-1.b.   
2 Agreement on Trade -Related Aspects of Intellectual Property Rights.  
3 General Agreement  on Tariffs and Trade (1994).  
4 Paris Convention for the Protection of Industrial Property , done at Paris, March 20, 1883, as revised 
at Brussels, December 14, 1990, at Washington, June 2,  1911, at The Hague, November 6, 1925, at London, 
June 2, 1934, at Lisbon, October 31, 1958, and at Stockholm, July 14, 1967.  References to the Paris Convention 
are, unless otherwise indicated, to the Stockholm Ac t of this Convention (1967).  The Paris Convention 
Article 2 national treatment obligation is incorporated into the TRIPS Agreement by Article 2.1 of the TRIPS 
Agreement. WT/DS174/R/Add.1 
Page A-18  
 
  
7. Consequently, the EC GI Regulation is also inconsistent with obligations under the TRIPS 
Agreement to enforce intellectual property rights.    
II. PROCEDURAL HISTORY 
8. On June 1, 1999, the United States requested consultations with the EC, pursuant to Article 4 
of the DSU
5 and Article 64 of the TRIPS Agre ement regarding the GI Regulation.6  Consultations 
were held on July 9, 1999, and thereafte r, but failed to resolve the dispute.  
 9. On April 4, 2003, the United States supplemen ted its request for consultations with a request 
for additional consultations with the EC pursuant to  Article 4 of the DSU, Article 64 of the TRIPS 
Agreement, and Article XXII of the GATT 1994.
7  The Government of Australia also requested 
consultations with the EC, and joint consultations were held on May 27, 2003, which also failed to 
resolve the dispute.  Consequently, on August 18, 2003, the United States requested the establishment 
of a panel, with standard terms of reference.8  Australia also filed a request for the establishment of a 
panel, with standard terms of  reference, on the same day.9  At the meeting of the WTO Dispute 
Settlement Body ("DSB") on October 2, 2003, th e DSB established a single panel pursuant to 
Article 9.1 of the DSU, with standard terms of  reference, to examine the US and Australian 
complaints.10 
 10. The panel was composed on February 23, 2004.
11 
 
11. On March 3, 2004, the EC requested that the Pa nel issue separate panel reports with respect to 
the complaints filed by Australia and the United St ates, pursuant to Article 9.2 of the DSU.  On 
April 23, 2004, the Panel confirmed that it w ould submit separate reports on this dispute. 
 III. FACTS 
12. The EC GI Regulation lays down the rules fo r the protection of geographical indications of 
agricultural products and foodstuffs intended for hum an consumption throughout the member States 
of the EC.
12  It provides, in Article 2(1), that Community protection for geographical indications of 
agricultural products and foodstuffs shall be obtained  in accordance with the Regulation, and 
establishes a comprehensive system for the registration and protection of GIs, as well as for objecting 
to the registration of GIs.    
 13. According to its preamble, the GI Regulation is a response to a consumer market that is 
increasingly willing to pay premium prices for ag ricultural products and foodstuffs with an 
identifiable geographic origin.  For those producers able  to register such designations of origin at the 
member State level, according to the preamble, th is enables producers of qualifying products to secure 
higher incomes.  The EC GI Regulation recognizes this benefit for qualifying products and producers 
and extends this benefit in a uniform manner throughout the EC.   
                                                     
 
5 Understanding on Rules and Procedures  Governing the Settlement of Disputes . 
6 WT/DS174/1 (June 1, 1999). 
7 WT/DS174/1/Add.1 (April 4, 2003). 
8 WT/DS174/20 (August 19, 2003). 
9 WT/DS290/18 (August 19, 2003). 
10 Dispute Settlement Body: Minutes of  Meeting Held on 2 October 2003 , WT/DSB/M/156, circulated 
November 10, 2003, para. 33. 
11 WT/DS174/21; WT/DS290/19 (February 24, 2004). 
12 Article 1(1) of the GI Regulation.  Exhibit COMP 1.b.  To avoid confusion, this submission will 
refer to countries that are part of the European Comm unities as "member States", as distinguished from WTO 
Members.  WT/DS174/R/Add.1 
 Page A-19 
 
 
  
14. Under the GI Regulation, a geographical indi cation is defined as the name of a region, a 
specific place or, in exceptional cases, a country, used to describe an agricultural product or a 
foodstuff:  
(a) originating in that region, specific place or country, and  
(b) which possesses a specific quality, reputation, or other characteristics attributable to 
that geographic origin and the production and/or processing and/or preparation of 
which take place in the defined geographical area.
13  
15. In order to use a protected geographic indica tion, a product must comply with the relevant 
specification, as provided for in Article 4(2) of the GI Regulation.14 
 
Registration   
16. Under Article 5 of the GI Regulation, a pe rson or a group of producers and processors may 
apply for a geographical indication – i.e., a qualifying "name" – with respect to the products which 
they "produce or obtain" by sending the application to "the Member State in which the geographical 
area is located."    17. Thus, under Article 5, only pe rsons or groups producing or obta ining products in the EC may 
file an application for a GI registration, and only products "produced or obtained" in the EC may be 
the subject of the registration. 
 
18. The application must be accompanied by a "p roduct specification" that includes information, 
not just on the product itself, but on how it is produced, as well as the details of the government inspection structures in place to ensure  compliance with the specifications.
15  To summarize the 
details provided in Article 4 of the GI Regula tion, the product specification must include, at a 
minimum:  
 
(a) name of the product, including the GI  
(b) description of the product and its ph ysical, chemical, microbiological and/or 
organoleptic characteristics 
(c) definition of the geographical area 
(d) evidence that the product or iginates in the geographical area 
                                                      
13 Article 2(2)(b) of the GI Regulation.  The GI Regulation also applies to  a narrower category of 
geographical source indications, i.e., "designations of origin", defined in Article 2(2)(b).  The distinction 
between the broader category of "geographical indications" and the narrower category of "designations of origin" is not relevant for purposes of this submission, since the GI Regulation applies equally to both.  
Therefore, the United States will refer in this submi ssion to both categories collectively as "geographical 
indications" or "GIs".  Further, there are obvious differences between "geographical indications" as defined in the EC GI Regulation and "geographical  indications" as defined in the TRI PS Agreement.  The use of the same 
term to describe both in this submission is not meant to imply that the definition in the EC GI Regulation is 
consistent with the definition in the TRIPS Agreement. 
14 Article 4(1) of the GI Regulation. 
15 Article 4(2) of the GI Regulation. WT/DS174/R/Add.1 
Page A-20  
 
 (e) description of the method of obtaining the product and information concerning 
packaging, if the group making the request de termines and justifies that the packaging 
must take place in the geographic area 
(f) details bearing out the link with the geographical environment or origin (g) details of inspection structures required by  Article 10 of the GI Regulation (Article 10 
contains detailed rules concerning inspection structures that the government must 
maintain in order to register a GI, and requires that any private inspection body approved by a member State must comply with EC standard EN 45011.  This standard does not appear to be available from public sources,
16 and the United States 
is unaware of any "equivalent " standard approved for non-EC countries, referenced in 
Article 10(3)). 
(h) specific labeling details (i) requirements laid down by EC or member State provisions.  
19. Under Article 5(5) of the GI Regulation, th e EC member State is required to forward the 
application to the EC Commission, if the applicati on satisfies the requirements of the GI Regulation. 
 
20. After verification that the application for regi stration meets the formal requirements of the GI 
Regulation, and assuming the application withstands objections, if any, the geographical indication is 
entered in the "Register of protected designations of origin and protected geographical indications" 
maintained by the Commission and published in th e Official Journal of the European Communities.
17  
 
21. Article 12(1) states that the GI Regulation "m ay apply" to agricultural products or foodstuffs 
from other WTO Members  – i.e., producers and processors in anot her WTO Member may apply to 
register the GI associated with products in that Member  – only if that WTO Member: 
 
(a) can give guarantees identical or equiva lent to those referred to in Article 4 ( i.e., with 
respect to the product specifications and inspection procedures required by the EC);  
(b) has inspection arrangements and a right to objection equivalent to those laid down in 
the EC GI Regulation for EC GIs; and  
(c) is prepared to provide protection equivalent to that available in the EC to agricultural 
products and foodstuffs from the EC ( i.e., offers reciprocal treatment to EC products). 
22. In other words, in order to benefit from the GI Regulation, a WTO Member must adopt a 
system for GI protection that is equivalent to that  in the EC, that is, a system (i) under which the WTO 
Member can provide guarantees equivalent to those in  the GI Regulation that its GI products meet the 
EC product specifications in Articles 4 and 10 of th e GI Regulation, (ii) providing objection rights 
equivalent to those in the GI Regulation, (iii) provi ding for internal inspection structures equivalent to 
those in the EC, and (iv) providing GI protection to EC  products that is equivalent to that available in 
the EC.  Further, these conditions require "reciprocity":  the EC will register and protect GIs associated 
with products from another WTO Member only if that WTO Member provides "equivalent" GI protection in its own territory to "c orresponding" products from the EC.  
                                                     
 
16 The United States tried unsuccessfully to obtain this standard from public sources, although it 
appears that it may be available for purchase from national members of the European Committee for Standardization.  See, e.g.,  
http://www.cenorm.be/cenorm/s tandards_drafts/index.asp  
17 Article 6(4) of the GI Regulation.  WT/DS174/R/Add.1 
 Page A-21 
 
 
  
23. Under Article 12(3), upon request of the WT O Member concerned, the EC examines whether 
a WTO Member satisfies the above conditions "as a r esult of its national legislation."  Only if it does 
so is registration and protection available in th e EC under the GI Regulation for products from that 
WTO Member.   
 
24. Article 12a sets out app lication procedures for producers and processors from other WTO 
Members satisfying these conditions of equivalency and reciprocity.  It requires those producers and 
processors to submit an application to the "authoriti es" in the relevant WTO Member, and requires the 
WTO Member, before submitting the application, to "consult" with any EC Member State that has a 
geographical area or a traditional name connected to  that area with the same name as is in the 
application.18  It also requires the WTO Member to de termine whether the application satisfies the 
requirements of the GI Regulation.  It then re quires the WTO Member to describe the basis for 
protection of the GI in that WTO Member, and d eclare that it has in place the same inspection 
structures required of EC member States.  Next, the WTO Member is instructed to forward the 
application and accompanying documentation to the Commission.  
 25. Article 12(2) requires that any use of a geogra phical indication in connection with products of 
other WTO Members can be authorized only if the country of origin "is clearly and visibly indicated on the label."
19  There is no similar requirement with respect to products of EC member States.  
 Objections 
26. "Legitimately concerned" natural or legal pers ons that reside or are established in a member 
State of the EC may object to a proposed registration under Article 7(3) of the GI Regulation.  Only persons who can demonstrate a "legitimate economic in terest", however, are authorized to consult the 
application.
20  Statements of objection are admissible21 if they demonstrate that a proposed 
registration (a) does not qualify for protection pursuant to the Regulation ( e.g., for failure to meet the 
definition of geographical indication in the GI Regul ation); (b) would "jeopardize the existence of an 
entirely or partly identical name or of a mark or the existence of products which have been legally on 
the market for at least five years" prior to publication of the application; or (c) is of a generic name.22  
The person objecting must file the statement of obj ection with the member State in which that person 
is resident or established.  That member State then may object to the registration within six months of 
publication of the application.23 
 27. By contrast, under Articles 12b and 12d, just as in the case of registration, it appears that 
persons from another WTO Member can object to an application for GI registration only if that WTO Member satisfies the conditions of equivalency and r eciprocity laid down under Article 12.  Further, 
they may not submit their objections directly to an  authority in the EC, such as the Commission or 
even to an EC member State, which is require d to evaluate the objections pursuant to the GI 
Regulation and has a long-established internal mech anism for working with the Commission on these 
matters.  Rather, they must submit their objection to  the WTO Member in which they reside or are 
established, which then is supposed to decide whethe r to forward the objection to the Commission.  In 
addition, only a person from a third country th at has a "legitimate interest" may object to a 
registration, and only those with a "legitimate ec onomic interest" are authorized to consult the 
                                                     
 
18 It is not clear how third country officials become aware that such a situation exists. 
19 It is unclear under the Regulation whether this applies to all third country GIs.   
20 Article 7(2) of the GI Regulation. 
21 It appears from the context of Article 7 of the GI  Regulation that this means that the objection is 
eligible for consideration by the EC Commission. 
22 Article 7(4) of the GI Regulation. 
23 Articles 7(1) and 7(2) of the GI Regulation.   WT/DS174/R/Add.1 
Page A-22  
 
 application.
24  This is in contrast to objections from pers ons resident or established in an EC member 
State, who need only be "legitimately concerned."25 
 
Scope of protection  
28. The very broad scope of protection for regi stered geographical indications is set out in 
Article 13(1) of the GI Regulation, which states that  
 
Registered names shall be protected against the following: 
 (a) any direct or indirect commercial use of a name registered in respect of products not 
covered by the registration in so far as those products are comparable to the products 
registered under the name or insofar as using the name exploits the reputation of the protected 
name; 
  (b) any misuse, imitation or evocation, even if  the true origin of the product is indicated 
or if the protected name is translated or accomp anied by an expression such as 'style', 'type', 
'method', 'as produced in', 'imitation' or 'similar'; 
  (c) any other false or misleading indicati on as to the provenance, origin, nature or 
essential qualities of the product, on the inner or outer packaging, advertising material or 
documents relating to the product concerned, a nd the packing of the product in a container 
liable to convey a false impression as to origin; 
 
 (d) any other practice liable to mislead the public as to the true origin of the product.  29. Article 13(2) also provides that protected names may not become generic, i.e., become the 
"common name" of an agricultural product or foodstuff.
26  
 
30. In addition, only products qualified to use a re gistered GI may include the official EC "GI" 
symbol or logo on its labels, packaging, and advertising materials.27  
 31. Finally, Article 14 specifically addresses tradem arks in the context of GIs.  Article 14(2) 
provides that if the use of certain prior trademar ks "engenders one of the situations indicated in 
Article 13", they "may continue to be used notwithstanding the registration of" a geographical 
indication.  The GI Regulation fails to provide th e owner of a valid prior trademark the right to 
prevent the use of a GI that results in a likeli hood of confusion with respect to the trademark. 
 
                                                     
 
24 Article 12d(1) of the GI Regulation. 
25 Article 7(3) of the GI Regulation. 
26 See Article 3(1) of the GI Regulation. 
27 Article 5a of Commission Regulation (EEC) No. 2037/93 of 27 July 1993, laying down detailed 
rules of application of Council Regulation (EEC) No. 2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs ("Commission Regulation 2037/93").  Exhibit 
COMP-2.a.  WT/DS174/R/Add.1 
 Page A-23 
 
 
 IV. THE EC GI REGULATION IS INCONS ISTENT WITH THE EC'S OBLIGATIONS 
UNDER THE TRIPS AGREEMENT AND THE GATT 1994 
A. THE EC GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS TO PROVIDE 
NATIONAL TREATMENT   
32. The EC GI Regulation is inconsistent with two different national treat ment obligations under 
the WTO Agreements.  The first is the obligation to  provide national treatment with respect to the 
nationals  of other WTO Members under Article 3.1 of the TRIPS Agreement, and, through its 
incorporation by Article 2.1 of the TRIPS Agreement,  Article 2 of the Paris Convention.  The second 
is the obligation to provide national treatment with respect to the products  of other WTO Members, 
under Article III of the GATT 1994.  This section a ddresses each of these inconsistencies separately 
below.  Section A.1 immediately below addresses the GI Regulation's inconsistencies with the 
national treatment obligations of the TRIPS Agreem ent and the Paris Convention.  Section A.2 then 
addresses the GI Regulation's inconsistencies w ith the national treatment obligations of the 
GATT 1994.  1. The EC GI Regulation is inconsistent with the EC's national treatment obligations with 
respect to nationals of other WTO Members under the TRIPS Agreement and the Paris Convention 
(a) The national treatment obligation under the TRIPS Agreement and the Paris Convention  
(i) Introduction 
33. The national treatment obligation has been a standard element in intellectual property 
agreements for over 120 years, dating from 1883, wh en the Paris Convention was first concluded.
28  
The Appellate Body called it a "fundamental principle of the world trading system"29 and noted that 
the framers of the TRIPS Agreement not only incor porated the national treatment obligations of the 
Paris Convention directly into the TRIPS Agreement,  but also saw fit, in addition, to include an 
additional provision on national treatment in the TR IPS Agreement.  "Clearly," the Appellate Body 
concluded, "this emphasizes the fundamental signifi cance of the obligation of national treatment to 
their purposes in the TRIPS Agreement."30  The Appellate Body continued: 
 
Indeed, the significance of the national treatme nt obligation can hardly be overstated.  
Not only has the national treatment obligati on long been a cornerstone of the Paris 
Convention and other international intellectua l property conventions.  So, too, has the 
national treatment obligation long been a corn erstone of the world trading system that 
is served by the WTO. 
As we see it, the national treatment obligation is a fundamental principle underlying 
the TRIPS Agreement, just as it had been in what is now the GATT 1994.31 
34. There is a considerable body of GATT a nd WTO dispute settlement reports that have 
considered the national treatment obligation in Ar ticle III of the GATT 1994.  But there has been only 
one dispute raising the national treatment obligation in the context of the TRIPS Agreement and the 
                                                      
28 See Gervais, Daniel, The TRIPS Agreement: Drafting History and Analysis , Sweet & Maxwell (2nd 
Edition, 2003) , p. 98. Exhibit US-1. 
29 Appellate Body Report, US – Section 211,  para. 233. 
30 Appellate Body Report, US – Section 211 , paras. 239-240. 
31 Appellate Body Report, US – Section 211 , paras. 241-242. WT/DS174/R/Add.1 
Page A-24  
 
 Paris Convention.
32  Therefore, this dispute represen ts only the second time that the TRIPS 
Agreement and Paris Convention obligations with resp ect to this "fundamental principle of the world 
trading system" will be clarified.  
(ii) Article 2 of the Paris Convention 
The ordinary meaning of the terms in Article 2 of the Paris Convention
 
35. Article 2.1 of the TRIPS Agreement directly incorporates many provisions of the Paris 
Convention, including the national treatment oblig ation in Article 2 of the Paris Convention:  
 
Nationals of any country of the Union sha ll, as regards the protection of industrial 
property, enjoy in all the other countri es of the Union the advantages that their 
respective laws now grant, or may hereafte r grant, to nationals; all without prejudice 
to the rights specifically 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.  
36. Article 2(2) of the Paris Conve ntion specifies, in addition, that no requirement of domicile or 
establishment shall be imposed on nationals of othe r Members as a prerequisite for the enjoyment of 
any industrial property right.  37. In the Paris Convention, "industrial prope rty" is understood "in its broadest sense".
33  
"Protection of Industrial property", for which Me mbers must provide national treatment, includes, 
among its "objects", trademarks, indi cations of source or appellations  of origin, and the repression of 
unfair competition,34 and applies specifically to agricultu ral industries and all manufactured and 
natural products.35   
 
38. The protection of "indications of source" is clarified in Article 10 of the Paris Convention, 
which provides that remedies be made available to  "interested parties" against goods bearing false 
indications as to their source.  "Interested party" includes any producer of goods located in the locality 
falsely indicated as the source (or located in the region where such locality is situated) or any 
producer located "in the country where the false indication of source is used".36  Similarly, 
Article 10 bis, which addresses unfair competition, requires Members to assure nationals of all other 
Members effective protection against unfair compet ition, which includes "indications or allegations 
the use of which in the course of trade is lia ble to mislead the public as to the nature, the 
manufacturing process, the characteristics, the suita bility for their purpose, or the quantity, of the 
goods."  
39. Therefore, with respect to the Paris Conven tion, national treatment "as regards the protection 
of industrial property" includes national treatment as  regards the right of all interested parties, 
regardless of nationality, to prevent false indicati ons that certain goods come from the region in which 
those interested parties produce goods or that the goods possess certain characteristics.
37  Further, this 
protection with respect to indications of source a nd unfair methods of competition is not limited to 
                                                      
32 i.e., US – Section 211.  
33 Article 1(1) of the Paris Convention. 
34 Article 1(2) of the Paris Convention. 
35 Article 1(3) of the Paris Convention.  Examples given include grain, fruit, cattle, mineral waters, 
beer, flowers, and flour. 
36 Article 10(2) of the Paris Convention. 
37 See Articles 10 and 10 bis(3) of the Paris Convention.  WT/DS174/R/Add.1 
 Page A-25 
 
 
 situations in which the region fal sely indicated as the source is in the territory in which the false 
indication is used.  Rather, it includes situations where that region – in which interested parties 
produce goods – is outside that territory ( e.g., a region in the territory of another Paris Convention 
Member).38  It is this protection, which concerns fa lse indications of source and unfair methods of 
competition in relation to any region in which intere sted parties are producing goods, that is subject to 
the national treatment obligation.  Of course, a Member may impose substantive and procedural 
requirements for obtaining this protection on inter ested parties.  But whatever requirements are in 
place with respect to indications of source and unfai r methods of competition, they have to provide 
the same advantages to non-nationals as they do to nationals.  
40. This is clear from the language of the national treatment obligation itself, in Article 2(1) of 
the Paris Convention, which provides that, as regards the protection of indications of source and unfair competition, among other industrial property:   
Nationals of any country of the Union sha ll ... enjoy in all the other countries of the 
Union the advantages that their respective laws now grant, or may hereafter grant, to 
nationals ... Consequently, they shall have the same protection as the latter, and the 
same legal remedy against any infringement of their rights. 
41. The ordinary meaning of these terms is that, whatever advantages a Member grants to its own 
nationals with respect to the industrial property rights at issue, must also be granted to the nationals of 
other Members.  This obligation does not dictate th e substance or procedures of a Member's laws on 
intellectual property.  It requires only that, whatev er a Member's substantive rules or procedures – 
such as those of the EC's GI system, with its pa rticular processes – they must result in the same 
advantages for nationals of other Members.    
Relationship between Article 2(1) of th e Paris Convention a nd conditioning national 
treatment on reciprocity and equivalence  
42. The ordinary meaning of the national treatme nt obligation speaks for itself: a Member cannot 
deny to other nationals advantages that it grants to  its own nationals with re spect to indications of 
source and unfair competition.  However, there are two specific concerns underlying this obligation 
that are relevant to this dispute.  First is the concern that "reciprocity" must not be a condition for 
protecting the industrial property of other Members' na tionals:  a Member must treat nationals of other 
Members at least as well as it treats its own, regardless of the treatment accorded by the other 
Members to their own or other nationals.39  The second is that a Member may not require that other 
Members adopt particular substantive or procedural  rules as a condition for protecting the intellectual 
property rights of the nationals of those Members ( i.e., "equivalence").40  
                                                      
38 Article 10 of the Paris Convention defines "interested parties" as including both  producers in the 
locality falsely indicated as the source, and  those in the country where the false indication of source is used. 
39 See, e.g. , Bodenhausen, G.H.C., Guide to the Application of the Paris Convention for the Protection 
of Industrial Property , United International Bureau for the Protection of Intellectual Property (BIRPI) (1969) ( 
reprinted (World Intellectual Property Organization) 1991), p. 12 (citing "the very important basic rule of the 
Convention", a principle which means that each Member  must apply to nationals of other Members "the same 
treatment as it gives to its own nationals , without being allowed to require reciprocity."  Emphasis in original.)  
Exhibit US-2. 
40 The importance of these conclusions was made clear at the very first negotiating session for the Paris 
Convention in 1880, where the concept of national treatment in intellectual property rights was born.  In the welcoming remarks for that first session, the French Minister for Agriculture and Commerce stated that the 
Conference could not achieve a complete international treat y of industrial property because of the difficulty of 
unifying national laws. He concluded that the Conference sh ould, therefore, strive to find the means to constitute 
a union which, without encroaching on domestic legislation
, would assure national treatment and lay down a 
number of uniform general principles.  Actes de Paris , 1880, pp. 14 - 17, at p. 16 (emphasis added).  Exhibit WT/DS174/R/Add.1 
Page A-26  
 
  
(iii) Article 3.1 of the TRIPS Agreement 
43. As the Appellate Body recently noted, the importance of national treatment in the TRIPS 
Agreement is reflected in the fact that the frame rs of the WTO Agreement not only incorporated the 
long-standing national treatment obligation in th e Paris Convention directly into the TRIPS 
Agreement, but they also added additional TRI PS Agreement-specific provisions that build on the 
Paris Convention national treatment obligations.
41   
 44. Article 3.1 of the TRIPS Agreement requires a WTO Member to "accord to the nationals of 
other Members treatment no less favourable than that it  accords to its own nationals with regard to the 
protection of intellectual property."
42  In that provision, "the term intellectual property refers to all 
categories of intellectual property that are the subject of Sections 1 through 7 of Part II"43 of the 
TRIPS Agreement, which includes the categories "trademarks" (section 2) and "geographical indications" (section 3).  "Protection" is broad in meaning, and includes "matters affecting the 
availability, acquisition, scope, maintenance and enfo rcement of intellectual property rights as well as 
those matters affecting the use of intellectual property rights specifically addressed in this 
Agreement."
44  The ordinary meaning of Article 3.1, therefore, signifies a broad obligation for the EC 
to accord non-EC nationals no less favorable treatment  than it accords its own nationals with respect 
to the availability, acquisition, scope, maintena nce and enforcement of rights in geographical 
indications, as well as to those matters affecting the use of geographical indications that are the subject of the TRIPS Agreement. 
 
45. Under the TRIPS Agreement, these rights incl ude the right, with respect to geographical 
indications, for "interested parties" to have the legal means to prevent the use of designations on a 
good that mislead the public as to the geographic origin of the good.  Similarly to the Paris Convention, this includes the right of all interested parties, regardless of nationality, to prevent uses in 
one Member that, inter alia , mislead the public into thinking that a good comes from the geographic 
region of the interested parties in another  Member.  This reading is reinforced by the definition of 
"geographical indications" in the TRIPS Ag reement as "indications which identify a good as 
originating in the territory of a Member, or a region or locality in that territory
. . ." .  Therefore, the 
national treatment obligation under the TRIPS Agre ement is that, whatever treatment a Member 
accords to its own nationals with respect to the rights in geographical indications, it must accord 
treatment at least as favorable to nationals of other WTO Members. This does not necessarily dictate 
how a Member provides for geographical indication protection, and does not prevent a Member from 
imposing substantive and procedural rules with resp ect to that protection.  However, it does require 
                                                                                                                                                                     
US-3.  In the negotiations on the national treatment prov ision, the French negotiator who had prepared the initial 
draft emphasized that, in order to be acceptable, the convention would have to respect the internal legislation of 
all contracting parties to the extent possible , and to restrict it to an obligation to extend national treatment to 
foreigners.   Actes de Paris , 1880, pp. 33 (emphasis added).  Exhibit US-3.  In the course of that discussion, the 
national treatment obligation was clarified by the deletion of the word "reciproquement"  from the original draft.  
Id., pp. 39-45.  Exhibit US-3.  And indeed, in subsequent revisions to this provision, several proposals to include 
a reciprocity element in the obligation found no support and were withdrawn.  For instance, a proposal by the 
United States to provide for the right to impose upon nationals of the other countries the fulfillment of 
conditions imposed on its nationals by those countries found no support and was withdrawn.  Actes de La Haye , 
1925, pp. 413-415 (First Sub-Committee).  Exhibit US-4. 
41 Appellate Body Report, US – Section 211 , paras. 239-240. 
42 Footnote omitted. 
43 Article 1.2 of the TRIPS Agreement. 
44 Article 3, fn. 3, of the TRIPS Agreement.  WT/DS174/R/Add.1 
 Page A-27 
 
 
 that, whatever those rules are, they do not result in less favorable treatment of other Members' 
nationals.45  
 46. As in the case of the Paris Convention nati onal treatment obligation, implicit in the TRIPS 
Agreement national treatment obligation is a pr ohibition on conditioning the treatment of other 
Members' nationals on reciprocity or on other Members having a specific domestic regime of 
protection.  Indeed, the national treatment ob ligation is a recognition that, despite the many 
substantive and procedural obligations in the TRIP S Agreement, not all aspects of the protection of 
intellectual property rights are subject to specific obligations, and that the TRIPS Agreement does not 
represent or require a complete harmonization of the Members' intellectual property laws.  The 
obligation is that, whatever the rules are for a Me mber's own nationals, including with respect to 
aspects not harmonized by the TRIPS Agreement, they mu st treat other Members' nationals at least as 
favorably.    47. The context of the TRIPS Agreement national treatment obligation supports this reading.  
Article 3.1 is in Part I of the TRIPS Agreement,  entitled "General Provisions and Basic Principles".  
The specific obligations with respect to each of th e categories of intellectual property are set out in 
Part II: "Standards Concerning the Availability, Sc ope and Use of Intellectual Property Rights".   But 
the obligations specific to each of the seven categor ies of intellectual property in Part II do not cover 
all procedural and substantive aspects of protecting th ose intellectual property rights.  For this reason, 
Article 3.1 is a general provision enunciating a basic principle underlying the obligations that follow 
in Part II that, whatever the rules are with resp ect to the protection of the seven categories of 
intellectual property – even with respect to those ru les that are not subject to specific obligations – 
they must not result in treatment for other Members' nationals that is less favorable than that accorded 
one's own nationals.    
48. Further, another "general provision and basic principle" is in Article 1.1, which specifically 
emphasizes that Members "shall be free to determ ine the appropriate method of implementing" the 
TRIPS Agreement.  This provision recognizes that  there are different ways to implement the 
obligations of the TRIPS Agreement and that Memb ers are not obligated to select any particular 
means of implementation over anot her.  Article 1.1 also permits Members to implement more 
extensive protection than is required by this Agreem ent, but specifically requires that any such more 
extensive protection not contravene the provisions of  the Agreement.  Therefore, whatever means of 
implementation or extent of protection a Member chooses under the TRIPS Agreement, it must not treat other Members' nationals less favorably than one's own nationals.  This safeguard is critical, 
especially in the area of geographic indications, in  which there is an acknowledged wide variety of 
mechanisms used to implement the obligations.
46   
 
49. Article 1.1 of the TRIPS Agreement as a w hole underscores the conclusion already apparent 
from the ordinary meaning of Article 3.1 that a Member may not condition protection of GI rights on other Members having an equivalent system of protection:  where the TRIPS Agreement itself 
provides the freedom for Members to determin e the appropriate method of implementing its 
provisions, a particular Member cannot undercut this right by requiring a particular method of 
implementation as a condition of protec ting GI rights.  Again, this principle is especially significant in 
                                                     
 
45 Indeed, as stated in its preamble, one object a nd purpose of the TRIPS Ag reement is to provide 
adequate standards and principles concerning the availability, scope and use of trade-related  intellectual 
property rights.  GI rights are partic ularly "trade-related" to the extent they relate to the protection in one 
Member's territory of GIs indicating an  area in another Member's territory. 
46 See, e.g. , "Document SCT/6/3 Rev. on Geographical Indications: Historical Background, Nature of 
Rights, Existing Systems for Protection and Obtaining Protection in Other Countries," World Intellectual Property Organization (WIPO) Document SCT/8/4 (April 2, 2002) (Exhibit US-5); "The Definition of 
Geographical Indications," WIPO Document SCT/9/4 (October 1, 2002) (Exhibit COMP-16). WT/DS174/R/Add.1 
Page A-28  
 
 the area of geographical indications, where there is a wide variety of methods for implementing the 
TRIPS Agreement obligations.  50. With respect to national treatment in the context of goods, under Article III of the GATT 
1994, as one panel noted, determinations as to whether imported "like products" are being 
discriminated against must be made "in the light of the purpose of Article III, which is to ensure that 
internal taxes and regulations ' not be applied to imported or dom estic products so as to afford 
protection to domestic production'.  The purpose of Ar ticle III is not to harmonize the internal taxes 
and regulations of contracting parties, which differ from country to country."47  The same is true for 
the national treatment provision in the TRIPS Agreement. 
 
51. The underlying principle for the national tr eatment obligation was illustrated recently in US – 
Section 211 .  In that dispute, the panel recognized that, although the TRIPS Agreement contained 
obligations on the kinds of signs that must be elig ible to be trademarks, it did not contain obligations 
with respect to who was the legitimate "owner" of  a trademark under domestic law.  The particular 
ownership rules for trademarks – like many substan tive and procedural rules on intellectual property – 
were left to the domestic legislation of the Memb ers.  After expressing concern about the potential for 
abuse through arbitrary national legislation on owne rship, the panel noted that the TRIPS Agreement 
"is not without safeguards against potential abuse", specifically noting that "Articles 3 and 4 of the Agreement require a Member to accord national and most-favoured-nation treatment to the nationals 
of other Members."
48  In other words, the panel, affirmed by the Appellate Body, found that the 
TRIPS Agreement had not harmonized or imposed sp ecific trademark ownership rules, but that the 
national treatment and most-favored-nation obligat ions provided the necessary safeguards against 
abuse in those areas where the TRIPS Agreement did not provide specific obligations.  
(iv) Conclusion with respect to Article 2 of the Pa ris Convention and Article 3.1 of the TRIPS 
Agreement 
52. In sum, the right with respect to indicati ons of source, unfair competition, and geographical 
indications in the Paris Convention and the TRIPS Ag reement includes the right of interested parties 
with respect to designations that mislead the pub lic in a given territory into thinking that a good 
comes from the region in which the interested pa rty is established and produces goods, and, in the 
case of geographical indications under the TRIPS Ag reement, that the good possesses the qualities, 
reputation, or other characteristic of products comi ng from that geographic area.  This right applies 
whether or not the interested party is established and producing goods in the territory of the Member 
in which the misleading use is occurring.  It is this  right in geographical indications and indications of 
source that is subject to the national treatment ob ligation: whatever requirements a Member has may 
not result in less favorable treatme nt for other Members' nationals. 
 
53. Moreover, the EC has an obligation under th e TRIPS Agreement and the Paris Convention to 
treat non-EC nationals at least as well as EC nationals  in all matters pertaining to the availability, 
acquisition, maintenance, and enforcement of right s in both non-EC and EC geographical indications 
and other types of indications of source, including with respect to the ability of non-EC nationals to 
register and protect the indications of source a nd geographical indications of goods they produce in 
their country of nationality from misleading and un fair uses in the EC.  These national treatment 
provisions prohibit making the availa bility, acquisition, maintenance,  and enforcement of these rights 
for nationals of other Members contingent on "recipr ocity" by other Members.  Further, these national 
treatment provisions prohibit making the availability , acquisition, maintenance, and enforcement of 
rights for nationals of other Members contingent on those other Members having a particular system 
of protection themselves.  Indeed, especially with respect to geographical indications, where there are 
                                                     
 
47 US – Malt Beverages , para. 5.25.  Emphasis added. 
48 Panel Report, US – Section 211 , para. 8.57.    WT/DS174/R/Add.1 
 Page A-29 
 
 
 numerous accepted methods among the WTO Members of offering GI protection, there is no 
requirement in the TRIPS Agreement that a Member  adopt a particular system of GI protection.49  Nor 
can a single Member impose such a requirement as a prerequisite for other Members' nationals to receive protection.  A Member cannot, through the selective withholding of rights from another 
Member's nationals, obtain concessions from other Me mbers that it was unable to achieve at the 
negotiating table in the TRIPS Agreement.  To the contrary, the national treatment obligation is clear: 
in all matters pertaining, inter alia , to the availability, acquisition, enforcement and maintenance of 
rights in geographical indications located in the te rritory of WTO Members, non-EC nationals must be 
accorded treatment at least as favorable as EC nationals.    
54. The EC GI Regulation fails flatly to meet this obligation.    
 55. In sections b and c below, the United States describes in a unitary fashion how the EC GI 
Regulation is inconsistent with the national treat ment obligations of the TRIPS Agreement and the 
Paris Convention.  As discussed above, however, there is a distinction between the relevant rights in 
the Paris Convention and those in the TRIPS Agreem ent.  "Protection of Industrial property" under 
the Paris Convention has as its object "indications of source or appellations of origin and the 
repression of unfair competition", and so requires protection against direct or indirect use of a false indication of geographic source that may, inter alia , mislead the consumer as to the characteristics of 
the goods.  The TRIPS Agreement also covers indica tions of geographic source where they rise to the 
level of "geographical indication" as define d in Article 22.1 of the TRIPS Agreement – i.e., where "a 
given quality, reputation, or other ch aracteristic of the good is essentially attributable to that origin."  
The GI Regulation's rules with respect to geographi cal indications are also rules with respect to 
indications of source and unfair methods of compe tition.  As such, they are subject both to the 
national treatment obligation of the Paris Conventio n, which requires national treatment with respect 
to indications of source and unfair methods of comp etition, and to the national treatment obligation of 
the TRIPS Agreement, which requires national treatment with respect to GIs in particular.   
 56. For ease of reading, therefore, in sections b and c below, when reference is made to the 
national treatment obligation with respect to GIs, it is understood to mean a reference to the TRIPS 
Agreement national treatment obligation with respect  to GIs, as well as the Paris Convention national 
treatment obligation with respect to designations of origin and unfair competition. 
 
(b) Non-EC nationals are accorded less favorable treatment than EC nationals under the GI 
Regulation with respect to the registration and protection of geographical indications. 
(i) Introduction 
57. The EC GI Regulation is entir ely inconsistent with the nationa l treatment obligations of the 
Paris Convention and the TRIPS Agreement.  Indeed, it specifically conditions GI protection on 
reciprocity and equivalence, two conditions that the national treatment obligation was specifically 
intended to prohibit.  Further, it runs directly contrary to the freedom that Members have under 
Article 1.1 of the TRIPS Agreement to determine the appropriate method of  implementing the TRIPS 
Agreement.  To summarize the details presented further below, the explicit purpose of the GI 
Regulation is to bestow numerous significant commercial and competitive advantages on those 
entitled to register and use geographical indicati ons, including higher profits, a coveted label, the 
ability to stop others from a wide variety of uses,  including the use of words that even "evoke" the 
geographical indication, broad enforcement in all EC Member States (both by government authorities 
on their own initiative, as well as by right holders) , and guarantees against their registered name 
becoming generic, among other significant benefits .  These advantages are available immediately and 
                                                     
 
49 See, e.g. , WIPO Document SCT/8/4 (Exhibit US-5) and WIPO Document SCT/9/4 (Exhibit 
COMP-16). WT/DS174/R/Add.1 
Page A-30  
 
 uniformly throughout the EC, which the EC itself recognizes is a significant advantage over 
attempting to seek protection separately under the diffe rent laws of each of the EC member States 
(even assuming that this is possible).    58. Yet these advantages are not made available on the same terms to the nationals of all other 
Members.  EC nationals are permitted to register  their home-based EC geographical indications, and 
obtain all of the considerable competitive advant ages touted by the EC, but US nationals (and 
nationals of most other WTO Members) are currently  not able to register their home US geographical 
indications, and therefore cannot get any of the bene fits of EC-wide GI protection summarized above.  
This is plainly inconsistent with the EC's obligations under the TRIPS Agreement and Paris 
Convention to treat US and other WTO Member nationa ls at least as well as EC nationals with respect 
to the protection of rights in geographical indications.  59. Further, taking the United States as an example, the only way that US nationals might in the future be able to register US-based GIs, and thus  obtain the same EC-wide GI protection for their US-
based GIs as EC nationals have for their EC-based GIs, is for the United States to (a) reciprocally 
grant equivalent GI protection for agricultural products and foodstuffs coming from the EC;
50 and (b) 
adopt a system for protecting geographical indications that the EC unilaterally decides is equivalent to 
that in the EC, including equivalent inspection and objection systems.  As discussed above, such 
requirements are directly contrary, not only to the letter of the national treatment obligation, but also to its specific objective of prohibiting the conditi oning of national treatment on reciprocity and 
equivalency.  Further, it forces Members to adopt a particular set of rules to implement the TRIPS 
Agreement, contrary to Article 1.1 of the TRIPS Agreement.  Instead of recognizing that there are 
many different ways to fulfill the TRIPS Agreement ob ligations on GIs, the EC is in effect telling the 
United States that its nationals will not be able to  register their US-based GI s in the EC and receive 
EC-wide protection for those GIs – as EC nationals are permitted to do with respect to their EC-based 
GIs – unless the United States adopts a system for GI protection that the EC judges is equivalent to 
the EC system.  In addition, only if the United States agrees, through this EC-mandated system, to 
offer reciprocal protection to EC products, will the EC allow US nationals protection with respect to 
their U.S-based GIs comparable to what EC nationa ls already receive with respect to their EC-based 
GIs.     
60. These conditions simply cannot stand up in th e face of the national treatment obligations of 
the TRIPS Agreement and the Paris Convention.     
(ii) The EC GI Regulation accords less favorable t reatment to non-EC Nationals with respect to 
registration and consequent protection 
61. The preamble to the EC GI Regulation speci fies that its major objective is to bestow a 
competitive benefit on producers of products with registered GIs, recognizing that:  
 
(a) empirically, consumers are tending to a ttach greater importance to the quality of 
foodstuffs, generating a growi ng demand for agricultural products or foodstuffs with 
an identifiable origin; 
(b) experience in the EC member States has b een that agricultural products or foodstuffs 
with a registered and identifiable origin have proven successful for producers of those 
products, who have thus been able to secu re higher incomes in return for improved 
quality; and 
                                                     
 
50 Article 12(1) of the GI Regulation.  WT/DS174/R/Add.1 
 Page A-31 
 
 
 (c) in light of the diversity of  national practices with respect to registered GIs, a uniform 
approach will ensure "fair competition be tween the producers" of registered GI 
products.  
62. The specific advantages bestowed on producers of registered GI products are laid out in the 
GI Regulation, including: 
 
(a) The ability to register their GIs in the official EC-wide "Register of protected 
designations of origin and prot ected geographical indications".51   
(b) The right to use the protected geographical indication throughout the EC market on 
products that qualify for the GI.52  
(c) The right to use an official EC "symbol" or "logo" informing the consumer that the 
product is a registered GI.53  As the relevant EC regula tion explains, "[t]he logo will 
allow producers of food products to increase awareness of their products among consumers in the European Union... The pres ence of this logo is a genuine guarantee 
for all European consumers, making it clear th at the special nature of this product lies 
in its geographical origin. Because of this, products will inspire more confidence.  As 
producers, the logo provides you which [ sic] a marketing tool.  You will be able to 
put the logo on the labels or packaging of your products, and also use it in your 
advertising."54 
(d) A broad right to have that registered GI protected throughout the EC, both 
automatically, at the initiative of government authorities, as well as through private 
rights of action,55 against a broad range of competing and disparaging uses.56   
(e) Protection from having the registered GI become generic (which causes the 
geographic indication to lose its value).57 
Non-EC National are accorded less favorable treat ment with respect to the registration and 
protection of their non-EC-based GIs than EC nationals are with respect to their EC-based 
GIs 
63. Plainly, the GI Regulation offers significant advantages and favorable treatment to producers 
of qualifying products with respect to the av ailability, acquisition, scope, maintenance, and 
enforcement of rights in GIs, as well as matters af fecting the use of GIs.  Unfortunately for US 
producers of quality products from US regions, these c onsiderable advantages with respect to rights in 
GIs are available only for producers and processors in the EC.  Article 5(3) requires that the 
application for the registration of a GI be "sent to the member State in which the geographical area is 
located."  US producers of quality products from US geographical areas, therefore, cannot even file a registration application, because their GI does not refer to a region in the EC.   
                                                     
 
51 Articles 6(1) - 6(4) of the GI Regulation. 
52 Article 4(1) of the GI Regulation. 
53 Article 5a of Commission Regulation 2037/93, p. 5.  Exhibit COMP-2.a. 
54 Annex II of Commission Regulation 2037/93.  Exhibit COMP-2.a. 
55 Review under Article 24.2 of the Application of the Provisions of the Section of the TRIPS 
Agreement on Geographical Indications, Responses to the Checklist of Questions, Addendum, WTO Council 
for Trade-Related Aspects of Intellectual Property Rights, IP/C/W/117/Add.10, March 26, 1999 ("Article 24.1 
Review"), Responses of the EC to Questions in Document IP/C/B nos. 1, 34, and 35.   
56 Article 13 of the GI Regulation. 
57 Article 13(3) of the GI Regulation. WT/DS174/R/Add.1 
Page A-32  
 
 64. The only avenue available to US nationals to  apply for GI protection with respect to their 
US-based GIs is in Article 12, which provides that  the GI Regulation may a pply to goods from third 
countries, including WTO Members, but only if that WTO Member satisfies certain conditions.  First, 
that WTO Member must adopt a system for GI protection that is equivalent to that in the EC, that is, a system (i) under which the WTO Member can provide guarantees equivalent to those in the GI 
Regulation that its GI products meet the EC produ ct specifications in Articles 4 and 10 of the GI 
Regulation, (ii) providing objection rights equivalent to those in the GI Regulation, (iii) providing for  
internal inspection structures e quivalent to those in the EC,
58 and (iv) providing GI protection to EC 
products that is equivalent to that available in th e EC.  The required inspection structures, described 
under Article 10 of the GI Regulation, must satisfy  numerous specific requirements, including, if 
private bodies are responsible, compliance with requirements laid down in other European 
standards.59  Second, any such WTO Members must offer reciprocity: the EC will register and protect 
products from another WTO Member only if that WT O Member is "prepared to provide protection 
equivalent to that available in the Commun ity to corresponding agricultural products for [ sic. "or"] 
foodstuffs coming from the Community."   
 
65. In other words, a US national is not able to  acquire, does not have available to him, and is 
unable to enforce, the same rights to his US-based GIs as EC nationals have with respect to their 
EC-based GIs, unless the United States (1) harmonizes its GI protection system to that of the EC (and, 
therefore drops its current system of protection through the certification and collective mark system 
and creates two separate GI protection systems, one specific to GIs, the other trademark-based); and 
(2) offers reciprocity with respect to European products.   
 66. These requirements of equivalency and reci procity by a WTO Member as a condition of 
granting GI rights to nationals of that Member are in consistent with, and indeed, directly contrary to, 
the national treatment obligations of the TRIPS Agreement and the Paris Convention. 
 
67. This reading of the national treatment obliga tion is not unique to geographical indications.  
For instance, in the area of trademarks, there are,  in general, two recognized systems for providing 
trademark protection among WTO Members.  The EC bases trademark ownership on registration; the 
United States generally bases trademark ownership on use.
60  The TRIPS Agreement is designed to 
accommodate both systems, and neither is preferred.61  Yet the TRIPS Agreement does contain an 
obligation, in Article 15, to make certain signs eligib le for registration as trademarks.  It also requires, 
in Article 16.1, that the owner of a registered trad emark be provided with specified exclusive rights to 
prevent certain uses of similar or identical signs.  The EC could not, consis tent with its national 
treatment obligations, withhold from US  nationals the ability to register signs or to prevent confusing 
uses, simply because the US system of trademark protection is different from that of the EC.  Nor 
could it refuse to allow US nationals to register a trademark in the EC or to exercise its trademark 
rights unless the United States agreed to permit  EC nationals to base their US trademark ownership on registration in the United States, rather than use, contrary to the US system of trademark 
protection.  In the area of trademarks, as in the area of geographical indications, the EC simply cannot 
condition intellectual property protection for a WT O Member's nationals on that WTO Member (1) 
adopting an EC-equivalent system of protection and (2) offering reciprocal protection to EC products 
or nationals.  As discussed above, both of these conditions on making intellectual property protection 
available to US nationals – equivalency and recipr ocity – are inconsistent with the EC's national 
                                                     
 
58 Article 12(1) of the GI Regulation.   
59 Article 10 of the GI Regulation. 
60 E.g., Appellate Body Report, US – Section 211 , para. 199.   
61 Note, e.g., that Article 16.1, providing rights with respect  to registered trademarks, states that those 
rights shall not "affect the possibility of Members making rights available on the basis of use."   See also US – 
Section 211 , paras. 188, 199.  WT/DS174/R/Add.1 
 Page A-33 
 
 
 treatment obligations.  This is as true in the area of geographical indications as it is the in area of 
trademarks.    68. Finally, even if a non-EC national succeeds in registering his home-based GI in the EC, he is 
still faced with treatment that is less favorable than  that accorded his EC national counterpart.  Under 
Article 12(2) of the GI Regulation, a name register ed by such a non-EC national will be authorized 
"only if the country of origin of the product is cl early and visibly indicated on the label."  There is no 
such requirement with respect to the use of name by  an EC national with respect to his EC-based GI.  
 
The national treatment obligation in the cont ext of goods is instructive as to the GI 
Regulation's inconsistency with  the national treatment obligations of the TRIPS Agreement 
and Paris Convention  
69. This conclusion is also consistent with a long line of adopted dispute settlement rulings and 
recommendations with respect to national treatment in the area of goods under the GATT 1994.  The Appellate Body noted in US – Section 211  that the national treatment obligation is a fundamental 
principle underlying the TRIPS Agreement, just as it was in what is now the GATT 1994.
62  T h e  
Appellate Body noted further that the language of Article 3.1 of the TRIPS Agreement is similar to 
that of Article III:4 of the GATT 1994, and stated that "the jurisprudence on Article III:4 may be 
useful in interpreting the national treatme nt obligation in the TRIPS Agreement."63  Indeed, one object 
and purpose of the TRIPS Agreement is to establish new rules and disciplines "concerning the applicability of the basic principles of GATT 1994."
64  As the Appellate Body itself has noted, 
national treatment is one of these principles.65  
 70. The dispute settlement history under Article  III of the GATT 1994 does in fact offer some 
useful guidance for this dispute.  Both the Appellate  Body and panels have repeatedly established that 
"[t]he broad and fundamental purpo se of Article III [the national treatment obligation] is to avoid 
protectionism in the applicati on of tax and regulatory measures"
66  Of course, the national treatment 
obligation in the GATT 1994 applies to products a nd that in the TRIPS Agreement and the Paris 
Convention applies to nationals.  But the genera l principle is easily extrapolated: the national 
treatment obligation is intended to avoid protectioni sm with respect to the protection of intellectual 
property rights.    
71. To this end, in the goods c ontext under Article III, the Appellate Body has stated that it will 
examine objectively the underlying criteria used in a measure, its structure and its overall application 
to ascertain whether it is applied in a way that affords protection to domestic products.
67  According to 
the Appellate Body, the protective application of a measure "can most often be discerned from the 
design, the architecture, and the revealing structure of a measure."68  In the dispute Japan – Alcohol , 
such factors as the magnitude of dissimilar ta xation between a primarily Japanese-produced white 
spirit, shoju, and a primarily imported white spir it, vodka, was considered evidence of a protective 
application.  72. Similarly, in the dispute Korea – Alcohol , the Appellate Body affirmed the panel's finding of 
a violation of national treatment in Korea's low taxe s on soju and high taxes on other types of alcohol.  
The Appellate Body noted with appr oval the Panel's explanation that "[ t]here is virtually no imported 
                                                     
 
62 Appellate Body Report, US – Section 211 , para. 242. 
63 Appellate Body Report, US – Section 211 , para. 242. 
64 Second paragraph, preamble, TRIPS Agreement. 
65 Appellate Body Report,  US – Section 211 , para. 242.   
66 Appellate Body Report, Japan – Alcohol , page 16,  citing US – Section 337 .    
67 Appellate Body Report, Japan – Alcohol , page 29. 
68 Id. WT/DS174/R/Add.1 
Page A-34  
 
 soju, so the beneficiaries of this structur e are almost exclusively domestic producers."
69  In other 
words, the structure of the tax – although the rat es were not expressly based on the origin of the 
product – was such that the high taxes were im posed almost exclusively on imported products. 
 73. In Chile – Alcohol , the Appellate Body found that, even though Chile's tax structure was 
based on objective criteria – i.e., higher taxes were imposed on bevera ges with higher alcohol content, 
and lower taxes on beverages with lower alcohol content – there was a violation of national treatment 
because the lower tax rate ended at the point wh ere most domestic products were found, and the 
higher tax rate began at the point  where most imports were found.
70 
 
74. In this dispute, applying the principles found in adopted dispute settlement rulings and 
recommendations with respect to GATT Article III, the GI Regulation's protective structure is plain.  The GI Regulation specifically recognizes the significa nt advantages it is granting, then systematically 
denies these advantages to nationals producing in th eir country of nationality when that country does 
not adopt EC-style rules and promise reciprocal treatment.   
 
75. Similarly, just as the substantial differen ce between the tax rates on imported products and 
domestic products was evidence of the prot ective nature of the measure in the Alcohol  disputes, the 
substantial difference in treatment between EC -based GIs and non-EC-based GIs – one can be 
registered and protected on an EC-wide basis, a nd the other cannot – is evidence of the protective 
nature of the GI Regulation.  
 
76. In addition, the national treatment obligati on with respect to goods under Article III of the 
GATT 1994 has been found to require "treatment of  imported products no less favourable than that 
accorded to the most-favoured domestic
 products ."71  In this dispute, by analogy, the treatment 
accorded to the most favored EC nationals  is the ability directly to register and protect GI products 
that they produce or obtain in their country of nationality under Article 5 of the GI Regulation.  By 
contrast, non-EC nationals produci ng or obtaining products in their  country of nationality are faced 
with additional conditions, under Article 12,  amounting to less favorable treatment.  It is not relevant 
that certain EC nationals – i.e., those producing or obtaining products  outside the EC – might be faced 
with these same conditions.  Non-EC nationals ar e entitled, not to the less favorable treatment 
accorded some EC nationals, but to the treatment acco rded the most favored EC nationals.  This is the 
treatment accorded to EC nationals who can regist er and protect GI products they produce in their 
country of nationality.  
The GI Regulation's TRIPS-inconsistent c onditions for permitting the registration and 
protection of GIs may be viewed as "extra hurdles" faced by non-EC nationals  
77. The Appellate Body has been clear that a measur e is inconsistent with national treatment if it 
imposes an "extra hurdle" on non-EC nationals  that is not imposed on EC nationals.72  As discussed 
above, the requirements imposed by the GI Regulati on on non-EC nationals as a condition of national 
treatment are not merely an "extra hurdle": they ar e themselves directly inconsistent with the national 
treatment obligation.  However, they also can  be viewed as "extra hurdles" imposed on non-EC 
nationals, albeit "extra hurdles" that are themsel ves inconsistent with national treatment.  
 
78. The EC GI Regulation plainly imposes a numbe r of "extra hurdles" on non-EC nationals who 
wish to have their home-based GIs registered a nd protected under the GI Regulation and achieve the 
same protection as is accorded to EC nationals with  respect to their EC-based GIs.  This registration 
                                                      
69 Appellate Body Report,  Korea – Alcohol , para. 150, citing  the panel report, para. 10.101. 
70 Appellate Body Report,  Chile – Alcohol , para. 66. 
71 US – Malt Beverages , paras. 5.17, 5.33 (emphasis added). 
72 Appellate Body Report, US – Section 211 , paras 260-268.  WT/DS174/R/Add.1 
 Page A-35 
 
 
 and protection goes to the availability, acquisiti on, maintenance, and en forcement, among other 
matters, of GI rights in the EC.    79. Article 22.2 of the TRIPS Agreement requires Members to provide the legal means for interested parties
 to prevent misleading uses of GIs and any use constituting an act of unfair 
competition under Article 10 bis of the Paris Convention.  The GI Regulation does provide the direct 
legal means for persons established in the EC to apply for registration and have their EC-based GIs 
protected on an EC-wide basis.73  By contrast, non-EC nationals h oping to have their non-EC based 
GIs registered and protected face a number of additional hurdles.  First, and perhaps most 
significantly, under Article 12(1) of the GI Regulat ion, that national would have to convince its 
government to adopt an EC-equivalent system of  GI protection (including extensive inspection 
systems and the like), to offer reciprocal GI treat ment to EC agricultural products and foodstuffs, and 
to take actions necessary to convince the EC, under Article 12(3), that its GI protection system and 
offer of reciprocity satisfy the EC's requirements .  To achieve protection, the WTO Member would 
have to actually take all of these steps, with all of  the additional time, effort, and expense that this 
entails.  An EC national seeking to register its ow n EC-based GI does not have to do any of this to 
register and have protected its GIs on an EC-wide basis.  80. Indeed, as a practical matter, non-EC nationals do not have the legal means to have their non-
EC-based GIs registered and protected under the GI Regulation, and do not have any sure way of obtaining those legal means.  These interested partie s simply are not in a position, either to establish a 
full EC-style GI system in their home country, or to provide reciprocal treatment. 
 81. Second, even where this hurdle does not exis t – where the EC has determined that the GI 
protection system of a WTO Member is equivalent to the EC system and where that Member offers reciprocal treatment to EC products – the non-EC na tional still faces an extra hurdle not faced by EC 
nationals.  Unlike his EC-based counterpart, a non-EC  national seeking protection for his home-based 
GI cannot apply for registration directly to the co mpetent authorities in Europe.  Rather, he must 
petition his government to apply on his behalf.  That non-EC Member may have neither the 
infrastructure nor the inclination to satisfy the stringent EC requirements with respect to that 
application, which includes an independent analys is of whether the application meets the EC's 
standards, possible consultations with EC Member  States, the development and submission of the 
legal provisions and the usage on which the GI stat us is based, a declaration that the full EC-
compliant inspection structures exist in that WT O Member, and any other documents on which that 
Member's assessment was based.
74 
 82. In other words, the GI Regulation has in place procedures, directly applicable to EC nationals 
and member States, under which EC nationals can apply through their member States to the 
Commission to have their GIs registered and prot ected on an EC-wide basis.  There are no such 
procedures in place with respect to an applica tion from a non-EC national producing products outside 
the EC.  An EC national has the infrastructure and th e regulations in place that allow him to register 
his EC-based GI directly with his member State.  A non-EC national has no such infrastructure or regulations, and must depend on the WTO Member of which he is a national to first put such 
procedures in place.   
 83. For these reasons, in addition to those men tioned above, non-EC na tionals are not being 
accorded treatment as favorable as that granted EC nationals under the GI Regulation with respect to 
the protection of geographical indications, under Artic le 3.1 of the TRIPS Agreement.  And they are 
not enjoying all the advantages being granted to EC nationals with respect to their indications of 
source or with respect to unfair competition, unde r Article 2(1) of the Paris Convention.  They 
                                                     
 
73 E.g., Articles 5 and 6 of the GI Regulation. 
74 Articles 12(1) and 12(2) of the GI Regulation. WT/DS174/R/Add.1 
Page A-36  
 
 certainly do not have the "same protection" as EC  nationals or the "sam e legal remedy against 
infringement of their rights" with respect to indications of source or unfair competition.   
The EC GI Regulation requires non-EC nationals  to become established in the EC as a 
condition of obtaining GI protection, contrary to Article 2 of the Paris Convention  
84. In addition, permitting only GIs located in the EC to be registered and protected is 
inconsistent with the Paris Convention prohib ition on requiring domicile or establishment as a 
condition of enjoying intellectual property rights.  As discussed above, Article 2(1) of the Paris 
Convention requires Members to permit nationals of other Members to enjoy the advantages "that 
their respective laws now grant, or may hereafter grant", to their own nationals.  Paris Convention 
Article 2(2) provides, in addition, that the Member where protection is claimed  – in this dispute, the 
EC – may not impose any "requirement as to domicile or establishment" in that Member on nationals of other Members "for the enjoyment of any industrial property rights."  As discussed above, "industrial property" is understood broadly under th e Paris Convention, and includes indications of 
source or appellations of origin, including GIs. 
 
85. The EC GI Regulation imposes an obvious re quirement of establishment in the EC as a 
condition of enjoying rights with respect to indications of origin.  It may be possible under the GI 
Regulation for a US national to register and protect  a geographical indication located in the EC, even 
though he cannot, absent the conditions noted above, do so with respect to his US-based GIs.  
Therefore a US national might be able to register  and protect a GI only if he is producing a product 
that qualifies for that geographical indication in the EC.
  Further, he can only claim rights under the 
GI Regulation with respect to products produced in the EC.  Therefore, in order to enjoy rights related 
to indications of source provided for under the GI  Regulation, he must produce or obtain agricultural 
products or foodstuffs in the EC , and to do this he must have some  form of investment or business 
establishment in the territory of the EC.  This requi rement that he establish himself in the EC as a 
precondition to obtain protections with respect to indications of source and unfair competition, is 
directly prohibited by Article 2(2) of the Paris Convention.  86. In sum, the EC GI Regulation accords less fa vorable treatment to non-EC nationals than to 
EC nationals with respect to the registration and cons equent protection of GIs.  It is for this reason, 
inconsistent with Article 2 of the Paris Conven tion and Article 3.1 of the TRIPS Agreement.  
 
(c) The EC GI Regulation accords less favorable tr eatment to non-EC nationals with respect to 
opportunity to object to the registration of GIs 
87. It is not only in the registration of GIs that  the GI Regulation is inc onsistent with  national 
treatment obligations.  The GI Regulation also lays  out rules to permit natural or legal persons to 
object to the registration of a GI.
75  The ability to object to the regi stration of a GI falls within the 
scope of "protection of intellectual property" under Article 3.1 of the TRIPS Agreement and 
"protection of industrial property" under Article 2(1)  of the Paris Convention, with respect to which 
national treatment must be provided because the ability to object is part of the ability to prevent others 
from using indications in a way that is misleading as to source.  Further, the right to object is necessary to the ability to acquire, maintain, or en force intellectual property rights and to prevent 
misleading indications of source.
76 
 88. The GI Regulation's provisions with respect to the ability to object to the registration of GIs 
accord less favorable treatment to non-EC nationals  than to EC nationals in several respects. 
                                                     
 
75 Articles 7, and 12b(2) and 12d of the GI Regulation. 
76 See, e.g. , Article 7(4) of the GI Regulation, in which the grounds for objection include where the GI 
would "jeopardize the existence of an entirely or partly identical name or of a mark" in the EC.  WT/DS174/R/Add.1 
 Page A-37 
 
 
  
89. First, the provisions for objecting to the registration of GIs mirror those for registering GIs in several respects, and therefore suffer from the sa me national treatment defects as those described 
above with respect to registration.  For instance, under the GI Regulation, EC nationals can object to a 
registration directly by submitting their objection to the member State in which they reside or are 
established.
77  Under Article 7(3), "[t]he competent authority shall  take the necessary measures to 
consider these comments or objections within the deadlines laid down."78  The EC member States are 
then instructed to collaborate in determining how to  respond to the objection, or to otherwise refer to 
the Commission for a final decision.    
90. By contrast, non-EC nationals cannot subm it their objection directly to the competent 
authorities in the EC, but must request that their own country transmit the objection.
79  That country 
may or may not have an appropriate mechanism to process the objection, and may or may not be 
inclined to transmit the objection, for its own poli tical or other reasons.  By contrast, EC member 
States have certain obligations under the EC GI Regulation with respect to the processing of 
objections, and there is an infrastructure in place in  the EC to process those objections.  As discussed 
above, the Appellate Body has been clear that a Member's measure is inconsistent with national 
treatment obligations if it imposes an extra hurdle on other Members' nationals that is not imposed on 
the Member's own nationals.80  This is one of those "extra hur dles" to GI protection that non-EC 
nationals face, and is, therefore, a violation of national treatment. 
 
91. Further, this additional hurdle also corr esponds to a "requirement as to domicile or 
establishment", which is a prohibited condition for th e enjoyment of rights under Article 2(2) of the 
Paris Convention.  EC persons can submit objections to  the member State in which they reside or are 
established, knowing that those objections will be c onsidered in accordance with the GI Regulation.  
By contrast, persons not resident or established in the EC are not accorded the same or "no less 
favorable" treatment, simply because they are not resident or established in the EC.   
 92. Moreover, Article 12d limits  the persons who can object to a registration application 
submitted by an EC member State to persons fro m "a WTO member country or a third country 
recognized under the procedure provided for in Article 12(3)" i.e., satisfying the conditions of 
equivalency and reciprocity described in the previous  section.  Just as conditioning registration of US-
based GIs on equivalency and reciprocity is imperm issible under the national treatment obligations of 
the TRIPS Agreement and the Paris Convention, so, too, is conditioning the right to object to a registration on equivalency and reciprocity.  Theref ore, the analysis provided in the previous section 
with respect to registration and EC-wide prot ection is equally applicable to objections. 
 
93. Finally, the EC GI Regulation allows only no n-EC nationals with a "legitimate interest" to 
object to a GI registration application, and pr ovides further that only those with a "legitimate 
economic interest" may consult the application for the GI.  One of the grounds for objecting to the registration of a name under Article 7(4) is that th e registration would jeopardize the existence of an 
entirely or partly identical name or the existence of products which have been legally on the market 
for at least five years.  Since the GI Regulation gr ants more favorable treatment to EC nationals than 
to non-EC nationals with respect to the registrati on and EC-wide protection of GIs in the first place, 
EC nationals are similarly more favored than non-EC  nationals with respect to the ability to object, 
because they are in a better position than non-EC nationals to have a "legitimate interest" or a "legitimate economic interest" with respect to compet ing names in the EC.  Non-EC nationals face an 
extra hurdle with respect to having a name that could be jeopardized by the registration of a GI. 
                                                     
 
77 Article 7(3) of the GI Regulation. 
78 Emphasis added. 
79 Articles 12b.2 and 12d.1 of the GI Regulation. 
80 See, e.g. ,  Appellate Body Report, US – Section 211 , para. 264;  US – Section 337,  para. 5.19 . WT/DS174/R/Add.1 
Page A-38  
 
  
94. Further, unlike a non-EC national, who must  have a "legitimate interest" or a "legitimate 
economic interest" in order to object to the regist ration of a GI, an EC national wishing to object 
under Article 7(3) of the GI Regulation may do so if he is "legitimately concerned".  It would appear 
that the requirement that one be "legitimately concer ned" is a lower standard than the requirement that 
one have a "legitimate interest", making it easier for an EC national to object to a registration than a 
non-EC national.      95. For all of these reasons, the GI Regulation's provisions with respect to objections to a GI 
registration are inconsistent with the national treat ment obligations of the TRIPS Agreement and the 
Paris Convention. 
 
2. The EC GI Regulation is inconsistent with the EC's national treatment obligations with 
respect to goods of other WTO Members under the GATT 1994 
96. Article III:4 of the GATT 1994 requires Members to accord no less favorable treatment to 
products originating in the territory of other Me mbers than it accords to like products of national 
origin "with respect to all laws, regulations and requ irements affecting their internal sale, offering for 
sale, purchase, transportation, distribution or use. "  The Appellate Body has noted that Article III:4 
should be interpreted in light of Article III:1, wh ich provides that the Memb ers recognize that these 
laws, regulations and internal re quirements "should not be applied to imported or domestic products 
so as to afford protection to domestic production."  The result, according to the Appellate Body, is 
that Article III obligates Members "to provide equality of competitive conditions  for imported 
products in relation to domestic products."
81  So, as the Appellate Body has concluded in prior 
disputes, the fundamental question of whether there is a violation of Article  III of the GATT 1994 is 
answered "by examining whether a measure modifi es the conditions of competition in the relevant 
market to the detriment of imported products."82  
 
97. The answer to this question with respect to the EC GI Regulation is a resounding "yes".  The 
EC GI Regulation is primarily intended to permit products that qualify for a registered geographical 
indication to gain substantial competitive advantages,  in terms of prices, profits and market share, 
over their conventional counterparts that do not so qu alify.  The EC's motivation behind promulgating 
the GI Regulation is the strong belief that producer s of products accorded GI protection fare much 
better in the marketplace than producers of products not accorded GI protection, and that restrictions 
on access to GI status and the provision of EC-wid e protection for those GIs will enhance this 
profitability.83  So, it is flatly inconsistent with Article III: 4 to make this favorable GI status available 
under the GI Regulation to products of EC origin if those products meet certain requirements and 
specifications, but to make it unavailable to pr oducts of other WTO Members unless additional 
requirements are met: i.e., unless those Members can prove to the satisfaction of the EC Commission 
that they (1) have a GI system  that is equivalent  to the EC's; (2) provide reciprocal GI protection to 
EC products, and (3) are willing and able to in tervene at the EC Commission on behalf of its 
nationals.  It is obvious from the structure and ar chitecture of the EC GI Regulation that it treats 
imported products less favorably than domestic pr oducts, and that it shifts the competitive conditions 
dramatically in favor of EC products.   
 
98. The paragraphs that follow will establish that each  of the elements of an Article III.4 violation 
is met.    
                                                     
 
81 Appellate Body Report, Japan – Alcohol , p. 16 (emphasis added). 
82 Appellate Body Report, Korea – Beef , para. 135, quoting Japan – Alcohol , pp. 16-17. 
83 Preamble, GI Regulation.  WT/DS174/R/Add.1 
 Page A-39 
 
 
 (a) The imported and domestic products are "like" 
99. Both the Appellate Body and pa nels have been clear that, where there is a general measure of 
general application ( i.e., not directly regulating specific products), the issue with respect to "like 
product" is not whether particular traded products are "like", but rather whether the measures makes 
distinctions between products based solely on origin.84  As the Appellate Body has noted, the term 
"like product" in Article III:4 of the GATT 1994 "is concerned with competitive relationships 
between and among products."85  The issue is whether any formal differentiation in treatment between 
an imported and a domestic product could be based upon the fact that the products are different – i.e., 
not like – rather than on the origin of the products involved.86 
 
100. In the case of the GI Regulation, the only difference between the pr oducts that may benefit 
from GI registration and protection – products from th e EC –  and those that may not so benefit on 
similarly favorable terms – products from other WTO Members –  is their origin.  Consequently, it is 
clear that the EC agricultural products and foodstuffs that are eligible for GI registration under one set 
of criteria and the non-EC agricultural products and foods tuffs that are only eligible if they satisfy an 
additional set of criteria are like products for purposes of Article III:4. 
 (b) The GI Regulation affects the "internal sale,  offering for sale, purchase, transportation, 
distribution or use" of the imported product 
101. Under Article III:4, Members have a national treatment obligation "with respect to all laws, 
regulations and requirements affecting the internal  sale, offering for sale, purchase, transportation, 
distribution or use" of imported products of the te rritory of any other Member.  This is a broad 
formulation, and a number of GATT and WTO disput e settlement reports have noted that the term 
"affecting" goes beyond measures that "directly" gove rn the conditions of sale or purchase, so as to 
cover measures which might "adversely modify the conditions of competition between domestic and 
imported products."
87  
 
102. The GI Regulation does exactly this.  As discu ssed more fully in the "Facts" section III and in 
section IV.A.1.b above, the GI Regulation governs th e manner in which registered names can be used 
– and not used – on products that are sold, offered for sale, purchased, distributed or used.  It governs 
                                                      
84 See Panel Report, US – FSC (Article 21.5 – EC) , paras. 8.133 (Finding it unnecessary "to 
demonstrate the existence of actually tr aded like products in order to establish a violation of Article III:4" when 
a measure  makes distinctions "between imported and domestic products" that are "solely and explicitly based 
on origin."  See also Panel Report, India – Autos , para 7.174 (when origin is "the sole criterion distinguishing 
the products, it is correct to treat such products as like products within the meaning of Article III:4.")    
85 Appellate Body Report,  EC – Asbestos , para. 103.  See also discussion of Alcohol  disputes in 
section IV.A.1.b.ii(2) above.   
86 Panel Report, US – FSC (Article 21.5 – EC),  para. 8.132.   
87 Eg., Panel Report, India – Autos , para. 7.196 ("Under GATT and WTO jurisprudence, the term 
'affecting' has consistently been defined broadly.  In particular, it has been well established that it implies a 
measure that has 'an effect on' and this indicates a broad scope of application" ( citing to  Italy – Agricultural 
Machinery , BISD 7S/60, para. 12.)  See also  Panel Report, Canada – Auto s, para. 10.80 (This term therefore 
goes beyond laws and regulations which directly govern the conditions of sale or purchase to cover also "any 
laws or regulations which might adve rsely modify the conditions of competition between domestic and imported 
products.");   Panel Report, US – FSC (Article 21.5 – EC) , at paras 8.139, 8.144 ("We agree with the views 
expressed in previous GATT and WTO panel reports that Article III:4 applies also to measures in the form of 
conditions that must be satis fied in order to obtain an 'advantage' from the government  ... Furthermore, the 
terms 'law, regulation or requirement affecting …' in Article III:4 are general terms that have been interpreted as 
having a broad scope" [footnotes omitted].)   Indeed, in US – Section 337 , the panel found that a law enforcing 
intellectual property rights with respect to imported prod ucts was a measure "affecting" internal sale of imported 
products. WT/DS174/R/Add.1 
Page A-40  
 
 the use of the special EC GI symbol, or logo, on labels, packaging and advertising for certain 
products, throughout the EC marketplace that, accor ding to the EC, provides consumer with a 
guarantee of quality and geographical origin with respect to those products, and provides the EC 
producer increased profits and market share.
88  It allows the products that qualify for the registered GI 
name numerous and very broad protections agains t other competitive and disparaging uses of the GI 
associated with the product, including protection by government authorities on their own initiative, as 
well as protection requested by private parties.89  And it provides protection against the geographical 
indication of the product becoming generic.90  The GI Regulation is, therefore, a law or regulation 
"affecting [the] internal sale, offering for sale, purchase, transportation, distribution or use" of 
imported products.  
 
(c) The imported product is accorded "less favorable treatment" than the domestic like product  
103. The Appellate Body has stated that "[t]he term 'less favorable treatment' expresses 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."91 
 104. It could not be clearer that the EC GI Regulation accords imported products less favorable 
treatment than domestic products.  Agricultural pr oducts and foodstuffs from another WTO Member 
will not be accorded the same favorable treatmen t under the GI Regulation as like products from the 
EC: 
 
(a) unless that WTO Member has an internal system of GI protection that is equivalent to 
that in the EC; 
(b) unless that WTO Member is prepared to offer reciprocity of GI protection to EC 
agricultural products and foodstuffs; 
(c) unless a WTO Member is prepared itself to apply to the EC for an affirmative 
decision with respect to the above points; and 
(d) unless, with respect to a particular app lication for a GI, that WTO Member is willing 
and able to submit an application to the EC  on behalf of its national, certifying to the 
presence of EC-equivalent and mandate d inspection structures and other 
requirements.  
105. Imposing these requirements as a condition of according imported products as favorable 
treatment as domestic like products is contrary to the Article III:4 national treatment obligation, which 
requires that such treatment be accorded unconditionally.
92  Further, for imported products from WTO 
Members whose system of GI protection does not ma tch that of the EC and which cannot meet the 
EC's requirements with respect to reciprocity, among other requirements, the less favorable treatment 
is obvious, and has been discussed in detail above .  To summarize, even where such products 
produced outside the EC qualify as GIs under the defi nition provided in the GI Regulation, because of 
                                                      
88 Preamble of the GI Regulation; Regulation 2037/93 (Exhibit COMP-2.a). 
89 Article 13(1) of the GI Regulation. 
90 Article 13(3) of the GI Regulation. 
91 Appellate Body Report, EC – Asbestos , para 100. 
92 See, e.g., Belgian Family Allowances , in which a Belgian provision exempting from certain charges 
products from countries requiring family allowance be nefits was found inconsistent with MFN (and likely) 
national treatment obligations.  WT/DS174/R/Add.1 
 Page A-41 
 
 
 their reputation or other characteristics, they cannot , unlike their "like" counterparts produced in the 
EC:   
(a) be registered in the official EC-wide "Reg ister of protected designations of origin and 
protected geographical indications";
93   
(b) use a registered geographical indication throughout the EC market;94  
(c) include on the packaging, label, or adve rtising the official EC "symbol" or "logo" 
informing the consumer that the product is a registered GI;95 
(d) receive the broad protections throughout the EC provided to registered products, both 
on the government's own initiative and throug h private rights of action, against an 
extremely broad range of competing and disparaging uses;96 or 
(e) be protected from having their geographi c name become generic (which causes the 
geographical indication to lose its value).97 
106. Further, even where the EC does permit importe d products to be registered and protected, that 
imported product is still faced with treatment that  is less favorable than that accorded its EC 
counterpart.  Under Article 12(2) of the GI Regulati on, a registered name can be used in connection 
with imported products "only if the country of origin of the product is clearly and visibly indicated on 
the label."  There is no such requirement with resp ect to the use of name on a product of EC-origin. 
 107. In sum, the EC GI Regulation accords less favorable treatment to imported products than it 
does to like products of national origin in respect of  laws, regulations and re quirements affecting their 
internal sale, offering for sale, purchase, transporta tion, distribution, or use.  Consequently, it is 
inconsistent with EC's obligations  under Article III:4 of the GATT 1994.  Nor can this less favorable 
treatment for imported produc ts be justified under any of the ex ceptions provided under Article XX of 
the GATT 1994.    
B. T
HE EC'S GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS TO PROVIDE MOST 
FAVORED NATION TREATMENT  
108. Just as was the case with respect to nationa l treatment, the EC GI Regulation is also 
inconsistent with two different most-favored-nati on obligations under the WTO Agreements, the first 
with respect to nationals  of WTO Members  under Article 4 of the TRIPS Agreement, and the second 
with respect to the products  of other WTO Members, under Article I:1 of the GATT 1994.  This 
section addresses each of these inconsistencies sep arately below.  Section B.1 immediately below 
addresses the GI Regulation's inconsistencies with the MFN obligations of the TRIPS Agreement.  
Section B.2 then addresses the GI Regulation's inc onsistencies with the MFN obligations of the 
GATT 1994.  
                                                     
 
93 Articles 6(1) - 6(4) of the GI Regulation. 
94 Article 4(1) of the GI Regulation. 
95 Article 5a of Regulation 2037/93.  Exhibit COMP-2.a.   As Annex II of this regulation explains, 
"[t]he logo will allow producers of food products to increase aw areness of their products among consumers in 
the European Union... The presence of this logo is a genuine guarantee for all European consumers, making it clear that the special nature of this product lies in its geographi cal origin. Because of th is, products will inspire 
more confidence.  As producers, the logo provides you which [ sic] a marketing tool.  You will be able to put the 
logo on the labels or packaging of your products, and also use it in your advertising. "  (Emphasis added.) 
96 Article 13 of the GI Regulation. 
97 Article 13(3) of the GI Regulation. WT/DS174/R/Add.1 
Page A-42  
 
 1. The EC GI Regulations is inconsistent with  the EC's most favored nation obligations 
with respect to other WTO Member's nationals under the TRIPS Agreement 
(a) The TRIPS Agreement requires that any advantag e, favor, privilege or immunity granted to 
nationals of any other country be accorded i mmediately and unconditiona lly to the nationals 
of all other WTO Members 
109. As the Appellate Body recently confirmed, the most favored nation obligation is as significant 
and as fundamental to the world trading system as the national treatment obligation:  
Like the national treatment obligation, th e obligation to provide most-favoured-nation 
treatment has long been one of the corner stones of the world trading system.  For 
more than fifty years, the obligation to provide most-favoured nation treatment in 
Article I of the GATT 1994 has been both central and essential to assuring the success of a global rules-based system for trade in goods.  Unlike the national 
treatment principle, there is no provisi on in the Paris Convention (1967) that 
establishes a most-favoured-nation obligation w ith respect to rights in trademarks or 
other industrial property.  However, the framers of the TRIPS Agreement  decided to 
extend the most-favoured nation obligation to  the protection of intellectual property 
rights covered by the Agreement.  As a co rnerstone of the world trading system, the 
most-favoured-nation obligation must be acco rded the same significance with respect 
to intellectual property rights under the TRIPS Agreement that it has long been 
accorded with respect to trade in goods under the GATT.  It is, in a word, 
fundamental.
98 
110. Indeed, the MFN obligation is, if anything, ev en more explicit in its rejection of conditions 
such as reciprocity and equivalent internal system s than is the national treatment obligation.   
 111. Article 4 of the TRIPS Agreement, the MFN obligation, provides that: 
 
With regard to the protection of intellectua l property, any advantage, favour, privilege 
or immunity granted by a Member to the nationals of any other country shall be 
accorded immediately and unconditionally  to the nationals of all other Members.  
112. The phrase "with regard to the protection of  intellectual property" is the same phrase as 
appears in the national treatment obligation, and refers, inter alia , to the rights of nationals in matters 
pertaining to the availability, acquisition, scope, maintenance, and enforcement of rights in their 
geographical indications, as well as those matters affecting the use of geographical indications 
addressed in the TRIPS Agreement, i.e., with respect to their ability to protect their geographical 
indications from misleading uses and unfair acts of competition.  The strong language that all advantages must be accorded  "immediately and unc onditionally to nationals of all other Members" 
emphasizes that this MFN provision prohibits making  the availability, acquisition, maintenance, and 
enforcement of these rights to nationals of other Members contingent on (a) "reciprocity" by other 
Members vis-à-vis  EC nationals; or on (b) the other Members having a particular system of protection 
themselves.  113. The context of these terms confirms this r eading.  Within the framework that establishes 
strong MFN obligations for the protection of intellect ual property, Article 4 also sets forth a limited 
number of particular advantages, favors, privileges,  or immunities, which, may, extraordinarily, be 
exempted from this obligation.  Notably, Article 4(b) specifically exempts from this obligation any 
advantage, favor, privilege or immun ity granted in accordance with the Berne Convention for the 
                                                     
 
98 Appellate Body Report, US – Section 211 , para. 297.  WT/DS174/R/Add.1 
 Page A-43 
 
 
 Protection of Literary and Artistic Works (1971)  and the International Convention for the Protection 
of Performers, Producers of Phonogram s and Broadcasting Organizations (1961) ("Rome 
Convention") that authorize a Member to depart fro m the general national treatment rule under those 
conventions.  Certain provi sions of these copyright and related ri ght conventions permit that treatment 
accorded nationals be a function no t of national treatment, but of the treatment accorded in another 
country – i.e., that a Member may in specific cases make  the extent of protection for copyrighted 
works or the subject matter of related rights depend on the extent of protection in the country of origin 
of the work, instead of granting the same extent  of protection to all nationals.  Other specific 
exemptions from the MFN obligation, particularly in the area of copyright and related rights, are laid 
out in Article 4.99  
 
114. By contrast, there is no exemption for advant age, favors, privileges, or immunities granted 
with respect to rights in geographical indications.  The context of the terms in Article 4 therefore 
confirms that "reciprocity" is clearly prohibited with respect to GIs.   
115. Further, adopted dispute settlement reports under Article I of the GATT 1994 (MFN in the 
goods context) provide guidance with respect to this obligation.  The GATT panel in Belgian Family 
Allowances  found a violation of Article I:1 based on  Belgium's measure conditioning a benefit to 
imported goods –  in that case, an exemption fro m a levy collected on purchases of products – on the 
adoption by the exporting Member of a system requiring companies to provide family allowance benefits to its employees that meets specific requirements.
100  The panel found that the exemption was 
inconsistent with Article I (and possibly Article III) because "it introduced a discrimination between 
countries having a given system of family allowan ces and those which had a different system or no 
system at all, and made the granting of th e exemption dependent on certain conditions."101  
 116. In sum, the immediate and unconditional re quirement in the MFN obligation to accord the 
same advantages, privileges, favors, or immunities to all nationals of WTO Members with respect to 
GIs does not permit Members to condition those advantages on an individual Member having a 
particular protection system or being prepared to offer reciprocity.   (b) The EC GI Regulation grants significant adva ntages, favors, privileges, and immunities to 
nationals of some countries that it does not accord at all to nationals of WTO Members 
117. As discussed above with respect to national treatment, the EC GI Regulation grants numerous 
and significant advantages, favors, privileges, and immunities to the nationals of any third country 
with respect to their home-based GIs, as long as that country (a) has a GI protection system equivalent to that of the EC; and (b) provides  protection to EC na tionals that is equivalent to that available in the 
EC with respect to agricultural products and foodstuff s.  Further, these advantages, favors, privileges, 
and immunities are available only if that third coun try is willing and able to convince the EC that it 
satisfies the EC's requirements with respect to the pr otection of GIs, and, with respect to applications 
for the registration of GIs, is willing and able to advocate on behalf of its national vis-à-vis  the EC.
102  
None of these advantages, favors, privileges, or im munities are available to nationals producing in 
their country of nationality, where that country is not willing or able to satisfy these requirements.   
 
118. Consequently, the EC GI Regulation is inc onsistent with the most-favored-nation obligation 
of the TRIPS Agreement for the same reasons that  it is inconsistent with the national treatment 
obligation of the TRIPS Agreement.  With respect to the registration and EC-wide protection of GIs, 
                                                      
99 See also Gervais, pp. 105 - 110. 
100 Belgian Family Allowances , paras. 3, 8. 
101 Belgian Family Allowances , paras. 3, 8. 
102 The actions required of WTO Members with respect  to GI applications and objections are detailed 
in the discussion on national treatment, and will not be repeated here. WT/DS174/R/Add.1 
Page A-44  
 
 as well as the right to object to the registration of GIs, the GI Regulation conditions the protection of 
intellectual property rights for a WTO Member's nationals on equivalency and reciprocity, and it 
imposes additional hurdles on nationals of some WTO Members that are not imposed on Members of other WTO Member nationals.  With respect to th e latter point, a national from a WTO Member that 
already has in place a system of GI protection that is  equivalent to the EC's system – recall, however, 
that there are many ways of implementing GI obligati ons, including that used by the EC – is not faced 
with the hurdle of developing a new GI protecti on system.  A national from other WTO Members, 
such as the United States, by contrast, faces this considerable hurdle.
103   
 119. Indeed, the GI Regulation is inconsistent w ith the MFN obligations of the TRIPS Agreement 
in two respects.  First, as among non-EC WTO Memb ers, nationals from WTO Members that satisfy 
the EC's conditions of reciprocity and equivale ncy are accorded more favorable treatment than 
nationals from those WTO Members that do not.  In th is connection, for example, the EU has signed a 
joint declaration on the protection of geographical  indications and designations of origin of 
agricultural products and foodstuffs with  Switzerland, which states that:  
 
The European Community and Switzerland (hereinafter referred to as "the Parties") hereby agree that the mutual protection of designations of origin (PDOs) and geographical indications (PGIs) is essential for the liberalization of trade in agricultural products and foodstuffs between the Parties ... The Parties shall provide 
for provisions on the mutual protection of PDOs and PGIs to be incorporated in the 
Agreement on trade in agricultural products on the basis of equivalent legislation, as 
regards both the conditions governing the re gistration of PDOs and PGIs and the 
arrangements on controls.
104 
120. Nationals of a WTO Member that does not meet the EC's conditions, by contrast, cannot 
expect to have their home-based GIs registered and protected. 
 
121. Second, each of the EC member States is also a WTO Member.  Therefore, under Article 4 of the TRIPS Agreement, any advantage, favor, privilege , or immunity granted by an EC member State 
to a national of another EC member State must be accorded immediately and unconditionally to the 
nationals of all non-EC WTO Members.  Yet, u nder the GI Regulation, for all of the reasons 
described in the section of this submission on natio nal treatment, an EC member State grants more 
favorable treatment to nationals from other EC me mber States than it accords to nationals from non-
EC WTO Members, with respect to the protection of GIs.   122. In sum, in these two respects, the GI Regul ation accords advantages, favors, privileges, and 
immunities to nationals of some countries that it doe s not accord to nationals of other WTO Members, 
despite the Article 4 requirement to accord them "i mmediately and unconditionally to the nationals of 
all other Members."   
                                                     
 
103 In US – Section 211 , para. 314, the Appellate Body incorporated and applied the "additional hurdle" 
analysis used in analyzing the national treatment  claim in its analysis of the MFN claim.   
104 Agreement between the European Community and the Swiss Confederation on trade in agricultural 
products - Final Act - Joint Declarations, including Joint Declaration on the protection of geographical 
indications and designations of origin of agricultural products and foodstuffs, OJ L 114 , April 30, 2002, p. 366. 
Exhibit US-6.    WT/DS174/R/Add.1 
 Page A-45 
 
 
 2. The EC GI Regulation is inconsistent with th e EC's most favored nation obligations with 
respect to goods of other WTO Members under the GATT 1994 
(a) Article I:1 of the GATT 1994 requires that an y advantage, favor, privilege, or immunity 
granted to any product originating in any other country be accorded immediately and 
unconditionally to the like product originating in the territories of all other WTO Members 
123. Article I:1 of the GATT 1994 provides that: 
 
with respect to all matters referred to in  paragraphs 2 and 4 of Article III, any 
advantage, favour, privilege or immunity granted by any contracting party to any 
product originating in or destined for any other country shall be accorded 
immediately and unconditionally to the like produc ts originating in or destined for the 
territories of all other contracting parties.105 
124. "Matters referred to in para graphs 2 and 4 of Article III" in clude, with respect to imported 
products, "laws, regulations, and requ irements affecting their internal sale, offering for sale, purchase, 
transportation, distribution or use."  As discussed above in the context of national treatment, the GI 
Regulation is such a measure. 
 125. Further, the "like products" requirement is satisfied in the case of the EC GI Regulation, 
because, as discussed in the context of national treat ment, the GI Regulation makes distinctions based 
solely on the origin of the product.   
126. Therefore, Article I:1 of the GATT 1994 requi res that any advantage, favor, privilege, or 
immunity granted by the EC GI Regulation to agricu ltural products and foodstuffs originating in any 
country be accorded, immediately and unconditionally
 to the agricultural products and foodstuffs 
originating in the territories of all other WTO Members.  
(b) The EC GI Regulation grants significant adva ntages, favors, privileges, and immunities to 
agricultural products and foodstuffs originating in some countries that it does not accord to 
like products originating in the territories of all WTO Members  
127. The EC GI Regulation does not satisfy the requirements of Article I:1 of the GATT 1994.  
Rather, the Regulation grants significant advantag es, favors, privileges and immunities to products 
from a third country only if that country (a) has a GI protection system equivalent to that of the EC 
and (b) provides  protection to EC nationals that is eq uivalent to that available in the EC with respect 
to agricultural products and foodstuffs.  These significant advantages, favors, privileges, and 
immunities have been detailed elsewhere, and includ e the ability to be marketed as a quality product 
of identifiable geographic origin, the right to be ma rketed with a coveted EC GI symbol, protection, 
including at the authorities' own initiative, agains t a broad range of competing uses of the product's 
geographical indication, and protection against th e geographic indication becoming generic (and thus 
losing its value).  These are all advantages, favors, privileges, and immunities that are granted to the 
products of third countries that meet the conditions  of reciprocity and equivalent GI systems, as 
determined by the EC.  The Regulation does not a ccord these advantages, favors, privileges, and 
immunities to the products of any third country that does not meet these conditions, despite the 
Article I:1 requirement to accord them "immediatel y and unconditionally to the nationals of all other 
Members."  Rather, it accords them to imported goods "subject to conditions with respect to the 
situation or conduct of"
106 WTO Members, discriminating against like products based on the origin of 
the product.  Further, it imposes an "extra hurdl e" on imported goods from some WTO Members that 
                                                      
105  Reference to Notes and Supplementary Provisions in Annex I omitted. 
106 Panel Report, Canada – Autos , para. 10.23. WT/DS174/R/Add.1 
Page A-46  
 
 it does not impose on imported goods from other WTO Members, as detailed in the preceding 
sections.   128. This conclusion is in accord with GATT and WTO dispute settlement reports going back to 
the earliest days of the GATT.  A GATT panel in Belgian Family Allowances  found a violation of 
Article I:1 based on an exemption from a fee that was available only with respect to products from 
countries that required its companies to offer a sp ecific family allowance benefit that satisfied 
requirements of Belgian law.  That panel found th at the fee exemption "would have to be granted 
unconditionally to all other contracting parties."
107   
 
The consistency or otherwise of the system  of family allowances in force in the 
territory of a given contracting party with  the requirements of the Belgian law would 
be irrelevant in this respect, and the Belg ian legislation would have to be amended 
insofar as it introduced a discrimination be tween countries having a given system of 
family allowances and those which had a different system or no system at all, and 
made the granting of the exemption dependent on certain conditions.108 
129. Similarly, in this dispute, the GI Regula tion "introduce[s] a discrimination between countries 
having a given system of [GI protection] and those which ha[ve] a different system."  Consequently, 
for all of the reasons above, the GI Regulation is inconsistent with Article I:1 of the GATT 1994.  
Further, this discrimination is not excused by any of the exceptions under Article XX of the GATT 
1994.  
 
C. THE EC GI REGULATION IS INCONSISTENT WITH THE EC'S OBLIGATIONS UNDER 
ARTICLE  16.1  OF THE TRIPS  AGREEMENT  
1. Introduction 
130. Article 16.1 of the TRIPS Agreement requir es Members to give owners of registered 
trademarks the exclusive right  to prevent confusing uses of simila r or identical signs by all third 
parties :  
 
The owner of a registered trademark shall ha ve 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 id entical or similar to those in respect of 
which the trademark is registered 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. 
131. Contrary to this obligation, and as explained in detail below, the EC GI Regulation fails to 
provide the owner of a valid prior registered tradem ark with the exclusive right to prevent all third 
parties (including those entitled to use a registered GI ) from using identical or similar signs (including 
GIs) that result in a likelihood of confusion.
109  This shortcoming is directly inconsistent with the EC's 
obligations under Article 16.1 of the TRIPS Agreement.  
 
                                                      
107 Belgian Family Allowances , para. 3. 
108 Belgian Family Allowances , para. 3. 
109 In fact, even in a case where the GI is presented as a sign that is identical  to a registered trademark 
and is being used fo r an identical good  (where, under the TRIPS Agreement, a likelihood of confusion is 
presumed), under the GI Regulation, the owner of the registered trademar k is powerless to prevent that sign 
from being used in the course of trade.  WT/DS174/R/Add.1 
 Page A-47 
 
 
 2. The US argument in light of the relationshi p between trademark rights and GI rights 
132. In many ways, GIs and trademarks serve the same function, in that they both are "source" 
indicators and can therefore serve as indicators of quality.  They both aim to prevent consumers from 
being misled or confused as to whether the go ods they buy possess the anticipated qualities and 
characteristics.110  Moreover, they both may take a similar physical form, prominently displayed on 
labels and in advertising materials.  On the on e hand, trademarks indicate the source of goods as a 
particular undertaking ( e.g., a producer or group of producers).111  On the other hand, geographical 
indications indicate the source of the goods as a particular geographic area, where a quality, reputation, or other characteristic of the good is essentia lly attributable to that origin.  Both forms of 
intellectual property are aimed at distinguishing go ods so that the consumer can make informed 
judgments about the goods they buy. 
 133. In addition, the TRIPS Agreement bestows each with a certain degree of exclusivity.  Both 
trademark owners and GI owners
112 have the right to exclude others from certain uses of signs or 
indications.  The right for trademark owners under Ar ticle 16.1 of the TRIPS Agreement is the right to 
exclude all others (including those entitled to use a registered GI) from using identical or similar signs 
(including GIs) for the same or similar goods in a way that results in a likelihood of confusion as to 
the source of the goods.  Under Article 22.2 of the TR IPS Agreement, the right for GI owners is to 
prevent uses (including of trademarks) that mislead  the consumer as to the geographic origin of the 
goods or constitute an act of unfair competition.113  There is nothing inconsistent in these two 
obligations, and each should be given its full sc ope in a manner that does not bring them into 
conflict.114  
 134. With the distinctions and similarities betw een these two categories of intellectual property 
rights in mind, the United States argues in this disput e that the EC GI Regulation is inconsistent with 
Article 16.1 of the TRIPS Agreement because, under the EC GI Regulation, owners of prior registered 
trademarks cannot prevent all third parties from using identical or similar signs on the same or similar 
goods for which the trademark is regi stered, even where there is a lik elihood that the consumer will be 
confused.  Under Article 14(2) of the GI Regulation, the best that the owner of a valid prior registered trademark can hope for is the ability to continue using its trademark, but without the ability to 
exercise the exclusive right that lies at the heart of  his trademark right.  This is inconsistent with 
Article 16.1 of the TRIPS Agreement.   
 
135. The United States is concerned in this disput e with the trademark rights provided owners of 
valid prior trademarks under Article 16.1 of the TR IPS Agreement.  For example, as stated at the 
outset of this submission, under Article 16.1, the owne r of a registered trademark has to be able to 
                                                     
 
110 And, indeed, among the varied means of satisfying the TRIPS Agreement obligations with respect 
to geographical indications, a number of WTO Members have chosen to protect geographical indications through their trademark system, notably through the use of certification marks and collective marks.  See WIPO 
Document SCT/8/4 (Exhibit US-5) and WIPO Document SCT/9/4 (Exhibit COMP-16). 
111 See Article 15.1 of the TRIPS Agreement. 
112 i.e., the collective body of authorized users of the GI. 
113 In addition, Article 22.3 of the TRIPS Agreement provides that Members must refuse or invalidate 
the registration of a trademark consisting of a GI that misleads the public as to the true origin of the product .  Note also that Article 23.2 of the TRIPS Agreement provides for the refusal or invalidation of certain 
trademarks for wine and spirits that contain or consist of a geographical indication.  Since the GI Regulation 
does not apply to wine and spirits, however, this provision is not directly relevant to this dispute. 
114 As recognized by the panel in Indonesia – Autos , para 14.28, "in public international law there is a 
presumption against conflict," which "is especially rele vant in the WTO context since all WTO agreements ...  
were negotiated at the same time, by the same Members and in the same forum."  Footnotes omitted.  Of course individual GIs that are identical or sim ilar to trademarks may, however, "conflict" in the sense that the GI may 
be confusing consumers. WT/DS174/R/Add.1 
Page A-48  
 
 take action against another producer selling an iden tical product, labeled with an identical name 
(protected as a geographical indication after the trademark registration), on the same shelf as the trademark owner's trademarked product.  The GI Regulation does not allow him to do this.  The 
United States is not arguing that trademarks that "m islead the public as to the true place of origin" of 
the underlying goods in a given territory must be re gistered and provided Article 16.1 rights in that 
territory.
115  Rather, the US argument is narrow in focus,  but critical: where a valid prior registered 
trademark exists, the owner of that trademark mu st, under Article 16.1, be able, through judicial 
proceedings or otherwise, to prevent all third pa rties from using a GI when the trademark owner can 
demonstrate that the GI is identical or similar to  the trademark for identical or similar goods, and is 
used in a manner that is likely to confuse the c onsumer as to the source of the goods.  As discussed 
below, the EC GI Regulation is inconsistent with this obligation. 
 136. In section 3 below, the United States describes the obligation to provide an exclusive right to 
prevent confusing uses under Article 16.1 of the TRIPS Agreement and explains why the exclusive 
right to prevent confusing uses is the essence of th e trademark rights under the TRIPS Agreement.  
Section 4 then describes how the EC GI Regulation is  inconsistent with this  Article 16.1 obligation. 
 
3. Article 16.1 of the TRIPS Agreement requires Members to provide the owners of 
registered trademarks with the exclusive right to prevent all
 third parties from using 
identical or similar signs resulting in a likelihood of confusion 
(a) Ordinary meaning of the terms in Article 16.1 
137. Article 16.1 provides that: 
 
The owner of a registered trademark shall ha ve 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 id entical or similar to those in respect of 
which the trademark is registered 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.
116   
138. The ordinary meaning of the terms in Article  16.1 confirms the breadth and strength of the 
rights that must be accorded owners of registered trademarks.  "Prevent" means to "[s]top, hinder, 
avoid", and "[c]ause to be unable to do ... something."117  "All" means the "entire number of" and 
"without exception".118  "Exclusive" means "[n]ot admitting of the simultaneous existence of 
something; incompatible" and "[o]f a right, privil ege, quality, etc.; possessed or enjoyed by the 
individual(s) specified and no others."119 
 139. Further, the ordinary meaning of Article  16.1 shows that geographical indications are 
included among the "signs" whose use an owner of a re gistered trademark must be able to prevent.  
"Sign" has a broad meaning, as indicated in Article  15.1 of the TRIPS Agreement, which includes as 
particular examples of signs "words, including person al names, letters, numerals, figurative elements, 
and combinations of colours."  The ordinary meaning of "sign" confirms this broad meaning: a "mark, 
symbol or device used to represent something or distinguish the object on which it is put"; "an 
                                                     
 
115 See Article 22.3 of the TRIPS Agreement.  Further,  under Article 22.2 of  the TRIPS Agreement, 
with respect to GIs, interested parties must be provided the legal means to prevent us es that mislead the public 
as to the geographical origin of the good.    
116 Emphasis added. 
117 The New Shorter Oxford English Dictionary (4th ed 1993), p. 2348 (Exhibit US-7). 
118 The New Shorter Oxford English Dictionary (4th ed 1993), p. 52 (Exhibit US-7). 
119 The New Shorter Oxford English Dictionary  (4th ed 1993), p. 875 (Exhibit US-7).  WT/DS174/R/Add.1 
 Page A-49 
 
 
 indication  or suggestion of a present state, fact, quality, etc."120  Similarly, "indication", which is part 
of the TRIPS Agreement Article 22.1 definition of  "geographical indication" is "something that 
indicates or suggests; a sign, a symptom, a hint."121  In short, the fact that "sign" is a broad term, and 
specifically includes an "indication", along with the fact that the ordinary meaning of "indication" includes a "sign", confirms that geographical indica tions are signs, the confusing use of which owners 
of registered trademarks must be  able to prevent under Article 16.1.
122   
 140. The ordinary meaning of the terms in Article 16.1, therefore, confirms that the owner of a 
registered trademark must, under Article 16.1, have the exclusive  right to stop  
 
all third parties ( i.e., the entire number of third parties, without exception, including 
third parties producing products that use a GI),  
from using in the course of trade identical or similar  signs  (i.e., including identical or 
similar geographical indications, that is, "indications" that identify a good as originating in a particular geographic area wh ere "a given quality, reputation, or other 
characteristic of [that] good is essentially attributable to " that geographic area) for 
goods or services which are identical or simi lar to those in respect of which the 
trademark is registered, 
where such use would result in a likelihood of confusion.   
(b) The context of the terms in Article 16.1 
141. The context of Article 16.1 confirms the ordina ry meaning of these terms.  Where there is a 
need to clarify the relationship among individual rights in geographical indications and trademarks, 
the TRIPS Agreement does so explicitly.  For instan ce, Article 22.3 of the TRIPS Agreement provides 
that protection of a geographical indication requ ires that a Member "refuse or invalidate the 
registration of a trademark" in certain specific inst ances where the trademark consists of or includes a 
geographical indication and its use would mislead the consumer as to the origin of the goods.
123  
 
                                                      
120 The New Shorter Oxford English Dictionary (4th ed 1993), p. 2858 (Exhibit US-7). 
121 The New Shorter Oxford English Dictionary (4th ed 1993), p. 1348 (Exhibit US-7). 
122 Notwithstanding the GI Regulation, the EC's own Community Trademark Regulation reflects this.  
Article 4 of that regulation defines a trademark to "consist of any signs" and the preamble states that the function of a trade mark is to "guara ntee the trade mark as an indication of  origin."  Council Regulation (EC) 
No. 40/94 of 20 December 1993 on th e Community Trademark, OJ L 11, Ja nuary 14, 1994, p. 1 ("Regulation 
40/94 on the Community Trademark").  See also  Article 2 of the First Council Directive of 21 December 1988 
to approximate the laws of the Memb er States relating to registered trademarks (89/104/EEC), OJ L 40, 
February 2, 1989, p. 1.  Exhibits COMP-6 and COMP-7.a. 
123 Article 22.3 of the TRIPS Agreement requires the refusal or invalidation of a trademark registration 
"which contains or consists of a geographical indicati on with respect to goods not originating in the territory 
indicated, if use of the indication in the trademark for such good s in that Member is of such a nature as to 
mislead the public as to the true place of origin."  This reflects princi ples that were alr eady included in the 
domestic trademark law of WTO Members.   See, e.g.,  Regulation 40/94 on the Community Trademark, 
Article 7(1)(g) ("The following shall not be registered: ... trademarks which are of such  a nature as to deceive 
the public, for instance as to the ... geographical origin of the goods or services") (Exhibit COMP-7.a); First 
Council Directive 89/104/EEC Article 3(1)(g) ("The following  shall not be registered or if registered shall be 
liable to be declared invalid: ... trademarks which are such  a nature as to deceive th e public, for instance as to 
the ... geographical origin of the good s or services.") (Exhibit COMP-6).  Th e principle these provisions reflect 
is not a superiority of geographical indications over trademarks, but a desire to protect the public or consumers 
from being misled.   WT/DS174/R/Add.1 
Page A-50  
 
 142. The Appellate Body has made clear, e.g., in EC – Sardines , that any exception to an 
obligation must be explicitly set out  in the text of the Agreement.
124  Indeed, where the TRIPS 
Agreement negotiators meant to sp ecify an exception to, or a limit on, geographical indication and 
trademark rights, they did so explicitly.  Article 24.5, for example, is an exception to the protection of geographical indications
125 that specifies that a Member's measures to protect geographical indications 
under the TRIPS Agreement shall not prejudice eligibilit y for or the validity of the registration of a 
trademark, or the right to use a trademark.  It appli es to trademarks that were applied for or registered, 
or whose rights have been acquired thr ough use either before January 1, 1996,126 or before the 
geographical indication is protected in its country of  origin.  In other words, where implementation of 
the GI provisions of the TRIPS Agreement might otherwise have prejudiced "eligibility for or the 
validity of the registration ... or the right to use a trademark" – and Article 23.2, which requires the 
invalidation of wine and spirit trad emark registrations that contain or  consist of wine or spirit GIs, 
might be an example of such a case – Article  24.5 would prevent that result for, or would 
"grandfather", those trademarks covered by its terms.    
143. Similarly, when a conflict between rights to exclude must result in a compromise, the TRIPS 
Agreement negotiators were also careful to spell this out.  For instance, because GIs are a specific 
type of sign linked to geographic origin, the TRIPS Agreement contemplates some instances where two identically named places exist and therefore wh ere two similar geographical indications may be 
used simultaneously under conditions set by the Me mbers.  Article 23.3 of the TRIPS Agreement 
provides for the situation where two different GI s for wine have the same name: "homonymous 
geographical indications".  Article 23.3 provides that "protection shall be accorded to each 
indication", but that "[e]ach Member shall de termine the practical conditions under which the 
homonymous indications in question will be differe ntiated from each other, taking into account the 
need to ensure equitable treatment of the producer s concerned and that consumers are not misled."  
No such provision exists allowing Members to permit continued use of a GI that is identical or similar 
to a valid prior registered trademark that would result in a likelihood of confusion, in the face of an 
infringement challenge by the trademark owner.  144. In sum, the ordinary meaning of the terms in Article 16.1, confirmed by their context, demonstrates that owners of registered trademarks must be given the exclusive right to prevent all third parties, including those authorized to use GI s, from using in the course of trade similar or 
identical signs, including geographical indications, for goods or services that are identical or similar to 
those covered by the trademark registration, where such  use would result in a likelihood of confusion.    
 (c) The object and purpose of the TRIPS Agreement with respect to Article 16.1 
145. Further, Article 16.1 must also be read in light of the object and purpose of the TRIPS 
Agreement, and specifically with respect to Article 16.1 and its grant of exclusive rights.  The 
Appellate Body in US – Section 211  emphasized the importance of the exclusive nature of these 
rights, finding that Article 16.1 confers on the owne r of "registered trademarks an internationally 
agreed minimum level of 'exclusive rights' that all WTO Members must guarantee in their domestic 
                                                     
 
124 Appellate Body Report, EC – Sardines , paras. 201 - 208. 
125 Article 24, in section 3 of the TRIPS Agr eement – "Geographical Indications" – is entitled 
"International Negotiations; Exceptions".  It should be noted here that Article 17 of the TRIPS Agreement contains a general provision that permits Members to provide "limited exceptions" to the rights conferred by a 
trademark, such as fair use of descriptive terms, but  any such limited exceptions  "must take account of the 
legitimate interests of the owner of the trademark and of third parties."  The EC GI Re gulation does not qualify 
as a "limited" exception, because there is no limit placed  on the permitted uses of registered GIs that are 
identical or similar to prior valid re gistered trademarks.  Further, the GI  Regulation does not take into account 
the legitimate interest of the trademark owner. 
126 Article 24.5 specifies the date of application of the TRIPS Agreement provisions, which, for the 
European Communities, is January 1, 1996.  WT/DS174/R/Add.1 
 Page A-51 
 
 
 legislation", and that these exclusive rights "protect  the owner against infringement of the registered 
trademark by unauthorized third parties."127 
 146. Indeed, EC jurisprudence, like that of the United States, recognizes that trademark exclusivity 
– the right of the owner of a registered trademark to  prevent the use of a similar or identical sign that 
would result in a likelihood of confusion – is the core of a trademark right.  For example, Advocate 
General Jacobs of the European Court of Justice stated in the Hag-II  case that: 
 
A trademark can only fulfil that role [ i.e.,to identify the manufacturer and to 
guarantee quality] if it is exclusive.  Once th e proprietor is forced to share the mark 
with the competitor, he loses control over  the goodwill associated with the mark. The 
reputation of his own goods will be harmed if the competitor sells inferior goods.  
From the consumer's point of view, equa lly undesirable consequences will ensue, 
because the clarity of the signal transmitted by the trademark will be impaired.  The consumer will be confused and misled.
128 
147. These principles have been consistently follow ed by the European Court of Justice, which 
held, for instance, in Bristol-Myers Squibb v. Paranova A/S , that: 
 
As the Court has recognized on many occasions, the specific subject matter of a trademark is in particular to guarantee to th e owner that he has the exclusive right to 
use that trademark …
129  
148. As detailed below, the GI Re gulation is an abrupt deviation fro m this jurisprudence in the EC.  
Maintenance of the principle underlying this juri sprudence would benefit nationals of all WTO 
members that are trademark owners in the EC – including nationals of the EC.  
149. That the exclusivity of a trademark owner's ri ght is the core of trademark rights has similarly 
been emphasized by the US Supreme Court.  The Cour t held in 1916 that "the right to use a trademark 
is recognized as a kind of property, of which the ow ner is entitled to the exclusive enjoyment to the 
extent that it has actually been used."
130  That early judgment was fully endorsed in the 1999 decision 
in College Savings Bank v. Florida Pre paid Postsecondary Education Expense Board , in which the 
Court stated that "[t]he hallmark of a protected propert y interest is the right to exclude others.  That is 
one of the most essential sticks in the bundle of rights that are commonly characterized as 
property."131 
 150. In sum, Article 16.1 enshrines a principle of trademark protection recognized in the jurisprudence of both the United States and the EC, and imposes an obligation on Members that 
reflects the vital importance to trademark owners of  exclusivity in the use of their trademarks.  
 
                                                     
 
127 Appellate Body Report, United States – Section 211 , para. 186. 
128 Advocate General's Opinion in Case C-10/89, SA CNL-Sucal NV v. HAG GFAG,  delivered on 13 
March 1990 [1990] ECR I-3711, at para. 19.  Exhibit US-8. 
129 C-427/93, Bristol-Myers Squibb and others v. Paranova , [1996] ECR I-3457, at para. 44 (Exhibit 
US-9); see also  Advocate General's Opinion in Case C-517/99, Merz & Krell GmbH & Co. KG , delivered on 18 
January 2001, [2001] ECR I- 6959, at paras 31, 42 ((Exhibit US-10); C-349/95, Frits Loendersloot and George 
Ballantine & Son Ltd. , [1997] ECR I-6227, at para. 24 ((Exhibit US-11);  Advocate General's Opinion in Case 
C-425/98 – Marca Mode CV. v. ADIDAS AG and ADIDAS Benelux B.V. , delivered on 27 January 2000, [2000] 
ECR I-4861, at para. 34 (Exhibit US-12). 
130 US Supreme Court, Hamilton-Brown Show Co. v. Wolf Brothers & Co., 240 US 251, 272 (1916).  
Exhibit US-13. 
131 US Supreme Court, College Savings Bank v. Florida Prepaid Postsecondary Education Expense 
Board , 527 US 666, 667 (1999).  Exhibit US-14. WT/DS174/R/Add.1 
Page A-52  
 
 (d) Conclusion with respect to the meaning of Article 16.1 
151. In light of the clear obligation under Article 16.1, contained in the ordinary meaning of its 
terms, in their context, and in light of the object and purpose of the TRIPS Agreement, it is plain that 
the owner of a registered trademark must be given the exclusive right to prevent all third parties, 
including those authorized to use GIs, from using in the course of trade similar or identical signs, 
including geographical indications, for goods or servi ces that are identical or similar to those covered 
by the trademark registration, where such use would result in a likelihood of confusion.   
4. Contrary to Article 16.1 of the TRIPS Ag reement, the EC GI Regulation does not 
permit owners of registered trademarks to exercise their Article 16.1 exclusive rights to 
prevent confusing uses   
(a) The text of the EC GI Regulation makes clear that owners of registered trademarks are not 
permitted to exercise their Article 16.1 rights 
152. The EC GI Regulation denies owners of regi stered trademarks their right under Article 16.1 
of the TRIPS Agreement to prevent confusing uses of similar or identical signs.  
 
153. Article 4(1) of the EC GI Regulation provid es that an agricultural product or foodstuff that 
complies with the specification filed with a GI regist ration – and only that product – is eligible to use 
a protected geographical indication, i.e., the name of a qualifying region, specific place, or country.
132  
Article 13 of the GI Regulation provides that na mes registered under that Regulation "shall be 
protected against" a broad range of uses or practi ces by those not authorized to use the name under the 
GI Regulation. 
 154. By contrast, nothing in the GI Regulation provides that the use of the GI can be limited in any way by the owner of a valid prior registered tr ademark who wishes to exercise his exclusive right 
under Article 16.1 of the TRIPS Agreement – that is, the right to prevent the use of a geographical 
indication in a manner that is likely to confuse th e consumer as to the source of a product identified 
with the earlier trademark.  Nor is there any discretion provided under the EC GI Regulation to 
prevent or limit uses of EC-registered GIs by qualif ied GI users, except in the case of a homonymous 
use.
133 
 155. To the contrary, Article 14 of the EC GI Regulation reinforces that owners of registered 
trademarks are denied their rights under Article 16.1 of the TRIPS Agreement.  Most obvious is 
Article 14(2), which addresses the situation of a trademark right that predates the GI right,
134 but 
where the use of the trademark creates one of the si tuations against which registered GI names are to 
be protected under Article 13 of the GI Regulation – e.g., the prior registered trademark "evokes" the 
later-registered GI name, in the terminology of  Article 13.  Under Article 16.1 of the TRIPS 
Agreement, if the use of the later GI in connection with identical or similar goods is likely to confuse 
the consumer as to the producer of the goods, then the owner of the registered trademark should have 
the exclusive right to prevent that confusing use by the GI owner.  The EC GI Regulation should 
reflect this.   156. The EC GI Regulation, however, takes a very different approach.  Far from providing that the 
owner of a prior registered trademark has the right  to prevent confusing uses, as is required by 
                                                     
 
132 Article 2.2(b) of the GI Regulation (def inition of "geographical indication").   
133 Article 6(6) of the GI Regulation. 
134 Under the EC GI Regulation, this is a trademark th at acquires rights (by application, registration, or, 
where permitted, by use) before either (1) a GI registra tion application has been submitted to the EC; or (2) the 
GI is protected in its country of origin.  WT/DS174/R/Add.1 
 Page A-53 
 
 
 Article 16.1, the GI Regulation, as a narrow exception  to the general GI right to prevent a broad range 
of uses, simply permits the registered trademark holder to keep using his trademark "notwithstanding" the later GI registration.  To be precise, Article 14( 2) provides that such a trademark that predates the 
GI registration "may continue to be used notwithstanding
 the [later] registration of a ... geographical 
indication".  (Emphasis added.) 
 
157. In other words, Article 14(2) specifically e nvisions that, even in cases where use of a GI 
raises a likelihood of confusion within the meani ng of Article 16.1 of the TRIPS Agreement, the 
product that is marketed and labeled with that GI can be sold alongside a similar or the same product 
that has been marketed and labeled with an identical  or similar valid prior registered trademark.  The 
owner of the trademark will have no ability to exercise his TRIPS Agreement Article 16.1 rights to 
prevent any confusing use by the later-registered GI .  As discussed above, however, the right to use a 
trademark without the right to exclude others fro m confusing uses would mean practically nothing, 
since the whole purpose and value of a trademark is  to be able to distinguish one company's goods 
from the goods of other companies; without the ability to  stop confusing uses, this value is eliminated.  
As Advocate General Jacobs of the European Cour t of Justice wrote, a trademark's role can be 
fulfilled "only if it is exclusive.  Once the proprieto r is forced to share the mark with the competitor, 
he loses control over the goodwill associated with th e mark... From the consumer's point of view, 
equally undesirable consequences will ensue, becau se the clarity of the signal transmitted by the 
trademark will be impaired.  The c onsumer will be confused and misled."135 
 
158. Article 14(3), the sole provision in the EC GI Regulation that addresses the confusing use of 
registered GIs vis-à-vis  trademarks, underscores the limited imp act that trademarks can have on GIs 
under the GI Regulation.  Article 14(3) provides that a GI shall not be registered "where,  in the light 
of a trade mark's reputation and renown and the length of time it has been used , registration is liable to 
mislead the consumer as to the true identity of the product."136  In other words, under the EC GI 
Regulation, trademark rights are fully respected onl y where the trademark has been used for a long 
time, and has considerable "reput ation and renown".  There is no guidance in the GI Regulation with 
respect to this standard.   159. The exclusive right under Article 16.1 to prev ent confusing uses, however, is not limited to 
owners of long-standing trademarks  of reputation and renown, however this is interpreted.  Rather, it 
is an exclusive right the Members must provide to all
 owners of valid prior registered trademarks, 
regardless of time of use, or of the trademark's reputation and renown.   160. In light of the EC GI Regulation, the EC trademark rules give no comfort that trademark 
owners' Article 16.1 rights will be respected.  The EC trademark rules
137 generally provide for the 
rights required by Article 16.1 of the TRIPS Agreemen t.  However, the EC Trademark Regulation, for 
example – which provides for a multinational tradem ark right across the EC –  specifically undercuts 
these rights with respect to confusing geographical i ndications by stating, at Article 142, that the 
Trademark Regulation "shall not affect" the EC GI  Regulation (which in parallel provides for a 
multinational GI right across the EC), and "in particular Article 14 thereof."  Moreover, by operation of law, trademark law rights under the laws of th e EC member States cannot contradict the provisions 
of EC regulations, including the Trademark Regulat ion and the GI Regulation.  Article 249 of the 
Treaty Establishing the European Community states that a regulation "shall be binding in its entirety 
                                                     
 
135 Hag II , para. 19.  Exhibit US-8. 
136 Emphasis added. 
137 Council Regulation (EC) No 40/94 of 20 D ecember 1993 on the Community Trademark 
("Regulation 40/94 on the Community  Trademark") and the First Council Directive of 21 December 1988 to 
approximate the laws of the Member States relating to registered trademarks (89/104/EEC).  Exhibits COMP-
7.a and COMP-6. WT/DS174/R/Add.1 
Page A-54  
 
 and directly applicable in all [m]ember States."
138  Consequently, if there is a conflict between 
domestic trademark law and the EC GI Regul ation, the EC GI Regulation prevails.139  
 161. In sum, under the EC GI Regulation, those who qualify to use a GI with respect to particular 
products have a right to use that GI, even if that us e results in a likelihood of confusion with respect to 
a prior registered trademark.  The best that  the trademark holder can hope for, under these 
circumstances, is continued use of his trademark on his own goods in the course of trade.  But as the 
jurisprudence quoted above points out, the right to use a registered trademark means nothing if the 
owner of that trademark cannot exercise his exclusiv e right to prevent the use of the same or similar 
signs on the same or similar goods that is likely to r esult in confusion.  For this reason, Article 16.1 of 
the TRIPS Agreement requires Members to provide these exclusive rights in respect of all
 third 
parties.  (b) The EC's explanations of the GI Regulation and the circumstances surrounding its coming 
into force confirm that the GI Regulation prevents owners of registered trademarks from 
exercising their Article 16.1 rights 
162. In various published explanations of the GI Regulation, the EC has emphasized the right of 
GI owners to use the GI and the fact that conflictin g trademarks will only be able to be used alongside 
such GIs, provided that the trademarks remain valid.  This confirms the above reading of the text that, 
under the GI Regulation, the best the trademark holder can  hope for is to be able to continue to use his 
trademark alongside the confusing GI.    
 
163. For instance, Advocate General Jacobs of the European Court of Justice has explained that 
"Article 14(2) is designed to allow a prior tradem ark to co-exist with a subsequently registered 
conflicting designation of origin provided that the trade mark was registered in good faith."
140   
Advocate General Jacobs concluded th at, in light of a subsequently registered geographical indication, 
the "use of the name" protected by a registered trad emark can "be allowed to continue pursuant to 
Article 14(2) of the regulation", but only if the additional requirements of Article 14(2) have been 
met.141  In addition, a publication of the European Commission opines that the TRIPS Agreement only 
provides that a valid prior trademark will "exist al ongside the" later-registered  identical or similar 
                                                      
138 Consolidated Version of the Treaty Establishing the European Community, Article 249.  
Exhibit US-15. 
139 See, e.g. , Judgment of the European Court of Justice in Simmenthal II , in which the Court stated as 
follows: 
[I]n accordance with the principle of the precedence of Community law, the relationship between provisions of the Treaty and directly applicable measures of the institutions on the one hand and 
national law of the Member States on the other is such that those provisions and measures not only by 
their entry into force render automatically inappli cable any conflicting provisio n of current national law 
but - in so far as they are an integral part of, a nd take precedence in, the legal order applicable in the 
territory of each of the Member States - also preclude the valid adoption of new national legislative 
measures to the extent to which they would be incompatible with Community provisions.  
Case 106/77, Amministrazione delle Finanze dello Stato v. Simmenthal SpA , [1978] ECR 629, at para. 
17.  Exhibit US-16. 
 
140 Opinion of Advocate General's Opinion in Case C-87/97, Consorzio per la Tutela del Formaggio 
Gorgonzola v. 1. Käserei Champignon Hofmeister GmbH & Co. KG, Heising, Germany 2. Eduard Bracharz Gesellschaft mbH, Vienna, Austria , delivered on December 17, 1998, para. 51.  Exhibit US-17.  The advocates 
general assist the European Court of Justice by providing "reasoned opinions on the cases brought before the 
court", opinions that the judges consider when drafting the ultimate ruling.  See "European Union institutions 
and other bodies, The Court of Justice", <http://europa. eu.int/institutions/court/index_en.htm>.  Exhibit US-18. 
141 Id., para. 58.  WT/DS174/R/Add.1 
 Page A-55 
 
 
 geographical indication.142  Indeed, the EC has specifically ch aracterized the relationship between a 
geographical indication and a previously registered trademark in this situation as "coexistence", and 
states that "... the TRIPs [Agreement] ... clearly envisages coexistence."143  
 164. Moreover, the EC has explained to the TRI PS Council that once a geographical indication is 
registered pursuant to the GI Regulation, "everybo dy who meets the established criteria has the right 
to use the geographical indication."
144  There was no suggestion of any limitation on that right with 
respect to any prior registered trademark owners.  Further, in the proposal that ultimately led to an 
amendment to the EC GI Regulation in April 2003,145 the Commission explained that Article 14 offers 
a trademark no more than the "possibility of co-existence."146  
 
165. Thus, far from offering any comfort that th e GI Regulation preserves Article 16.1 trademark 
rights, these numerous explanations confirm the opposite conclusion.   
 166. This conclusion is even further buttressed  by the unfortunately ill-fated attempt by the 
European Parliament to address the problem created by denying trademark owners their exclusive 
right to prevent confusing uses of signs under EC  law.  The Committee on Legal Affairs and the 
Internal Market of the European Parliament was crit ical of Article 14(2) of the GI Regulation for the 
very reasons identified in this submission: under Ar ticle 14(2), trademark owners lose their right to 
prevent all third parties from using a similar or identi cal sign that results in a likelihood of confusion.  
That Committee stated:  
 
To deprive a trademark owner of the exclusive right conferred by Community trademark law by obliging him to allo w a similar designation of origin or 
geographical indication, such as is likely to cause confusion, to coexist with the trademark is tantamount to expropriation.   Given that the regulation makes no 
provision to compensate trademark owners , such expropriation would constitute 
illegal confiscation.
147  
167. The proposed amendment by the Committe e on Legal Affairs w ould have added the 
following language, in relevant pa rt, to the end of Article 14(2): 
 
                                                      
142 TRIPS Agreement – Geographical Indications, Official Publication of the European Commission, 
p. 23.  Exhibit US-19. 
143 European Commission, Directorate General Trad e, Report to the Trade Barriers Regulation 
Committee, TBR Proceedings concerning Canadian  practices affecting Community exports of Prosciutto di 
Parma , p. 35 (1999).  Exhibit COMP-13. 
144 Review Under Article 24.2 of the Application of the Provisions of the Section of the TRIPS 
Agreement on Geographical Indications, Responses to the Checklist of Questions, Addendum, Council for 
Trade-Related Aspects of Intellectual Property Rights, IP/C/W/117/Add.10 (26 March 1999), p. 13 (EC 
response to question 36).  The EC has also explained that "a geographical indication must be used [in order to maintain rights]."  Id. at p. 12 (response to question 30). 
145 Council Regulation (EC) No 692/2003 of 8 April 2003 amending Regulation 2081/92, OJ L 99, 
July 14, 2003, p. 1.  Exhibit COMP-1.h. 
146 Proposal for a Council Regulation amending Regulation (EEC) No. 2081/92 on the protection of 
geographical indications and designations of origin for agricultural products and foodstuffs, presented by the 
Commission of the European Communities, 2002/0066 (Bru ssels, March 15, 2002), p.  4.  Exhibit US-20. 
147 Opinion of the Committee on Legal Affairs and the Internal Market for the Committee on 
Agriculture and Rural Development on the proposal for a Council regulation amending Regulation (EEC) No 
2081/92 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, European Parliament, 2002/0066(CNS) (10 September 2002), p. 14.  Exhibit US-21.  See also  
Exhibit COMP-14. WT/DS174/R/Add.1 
Page A-56  
 
 This Regulation shall be without prejudice to the right accorded under the laws of the 
Member States and/or Council Regulation (EEC) No 40/94 of 20 December 1993 on the Community trade mark to bring proceedings for infringement of the right embodied in a trade mark conforming to the conditions set out in the first sentence of this paragraph on account of the use of a designation of origin or geographical 
indication subsequent to that trade mark, be it under the civil, administrative, or 
criminal law of the Member States.
148  
168. This proposed amendment would have inco rporated the substantive disciplines of EC 
trademark law into the GI Regulation, thereby pr oviding for the ability of trademark owners to 
exercise their exclusive rights.  In particular, the amendment would have provided for the rights of the 
owner of a valid prior registered trademark to prev ent the use of a similar or identical geographical 
indication when such use would result in a likelihood of confusion with the trademark.   169. Unfortunately, the amendment was not adopted, and the defect in the EC GI Regulation remains in place.  
 
5. Conclusion with respect to the GI Regulation's inconsistency with Article 16.1  
170. To conclude, TRIPS Article 16.1 requires that  owners of registered trademarks have the 
exclusive right to prevent confusing uses by others .  The EC GI Regulation does not permit owners of 
registered trademarks to exercise those rights.  Therefore, the EC GI Regulation is inconsistent with the EC's obligations under Article  16.1 of the TRIPS Agreement.  
 
D. T
HE EC GI REGULATION IS INCONSISTENT WITH ARTICLE  22.2  OF THE TRIPS  AGREEMENT  
171. Article 22.2 of the TRIPS Agreement requires that "[i]n respect of geographical indications, 
Members shall provide the legal means for interested parties to prevent : 
 
(a) the use of any means in the desi gnation or presentation of a good that 
indicates or suggests that the good in question originates in a geographic area other than the true place of origin in a manner which misleads the public as to the geographic 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). 
172. As discussed above in the context of nati onal treatment, Article 22.2 requires WTO Members 
to provide these legal means directly to all "interested parties", a requirement that is not met by simply providing such means to WTO Members at the government-to-government level.    173. "Interested parties" is not defined in th e TRIPS Agreement, but Article 10 of the Paris 
Convention, concerning false indications of geogra phical source, provides useful context that an 
"interested party" includes a producer or seller established in the region falsely indicated as the 
source.  As discussed in the national treatment cont ext, this includes producers or sellers in regions 
located outside the territory of the country wher e the false indication of source is being used.  
 174. The EC GI Regulation does not provide the lega l means required by Article 22.2 to interested 
parties in at least two respects.  First, as discuss ed above, interested persons with GIs outside the EC 
do not have the legal means to register and protect their own GIs – that is, those GIs in their country 
of origin – on an EC-wide basis under the GI Regulation.  They therefore do not have the legal means 
                                                     
 
148 Exhibit US-21, at pp. 13-14.  WT/DS174/R/Add.1 
 Page A-57 
 
 
 under the GI Regulation to prevent misleading uses under Article 22.2(a) or acts of unfair competition 
under Article 22.2(b) of the TRIPS Agreement "[ i]n respect of geographical indications."   
 175. It is important to recall that Article 2(1)  of the GI Regulation specifies that "Community 
protection of designations of origin and of geog raphical indications of agricultural products and 
foodstuffs shall be obtained
 in accordance with this Regulation."149  The broad protections laid out in 
Article 13 of that Regulation appear to encompass those that are required by  Article 22.2 of the 
TRIPS Agreement.  And, in fact, some interested parties – those with geogra phical indications located 
in the EC – do have the legal means to protect their GIs against misleading uses and acts of unfair competition through the registration process.    
 
176. But for interested parties with geographical  indications located outside the EC, the legal 
means to protect their GIs on a uniform basis throughout the territory of the EC are theoretically available only if the WTO Member in which thei r products are produced adopts an EC-specified 
system of GI protection and offers reciprocal treatment to EC goods.
150  With respect to interested 
parties in other WTO Members that do not satisfy these requirements, therefore, the EC GI Regulation 
fails to provide any legal means whatsoever to prevent misleading uses or unfair acts of competition 
on an EC-wide basis.   177. Further, even if that Member adopted the appropriate system and offered reciprocity to the EC, the interested party would continue to depe nd on its Member government to intercede on its 
behalf and consult with any affected EC member State, make a determination that the interested 
party's application meets the requirements of the GI  Regulation, certify to the Commission that it has 
the proper protection system and inspection structur e in place, and transmit the application to the 
Commission.
151  Therefore, the EC GI Regulation does not provide the legal means to prevent 
misleading uses on an EC-wide basis to "interested parties" from all WTO Members.  
 
178. Thus, an interested party from a Member that  does not have an EC-equivalent system and that 
does not offer reciprocity does not have the lega l means required by Article 22.2 of the TRIPS 
Agreement.  Further, there is nothing that this in terested party can do to obtain the "legal means" 
guaranteed him under the TRIPS Agreement, because it is  not in a position, either to establish a full 
EC-style GI system in his home country, or to provide  reciprocal treatment.  In  addition, even if such 
a system were in place, the interested party would need to rely on its own government to act on an 
application, which that government may or may not have the infrastructure or the political inclination 
to do.  Consequently, the GI Regulation provides a possible method  – and one that is highly intrusive 
and costly – only for other Members  to obtain Article 22.2 protection on  behalf of interested parties  in 
their territory.  It does not provide those legal means di rectly to those interested parties, as required by 
Article 22.2.  
 179. Moreover, there is a separate and possibly more serious concern with respect to interested parties' ability to object to the registration of GIs under the EC GI Regulation.  As discussed above in 
the context of national treatment, the ability to object to a registration is an important element of the 
legal means required to prevent misleading uses and acts of unfair competition under Article 22.2 of 
the TRIPS Agreement.  This is because once a GI is  registered and protected, there appears to be no 
ability to prevent or limit its use through the EC,
152 even if it is or becomes misleading or confusing.  
In spite of this, interested parties from third countries cannot object directly to the registration of a GI.  Rather, they must request their government to do so.
153  However, their government may or may not 
                                                      
149 Emphasis added. 
150 Article 12 of the GI Regulation. 
151 Article 12 of the GI Regulation. 
152 Recall that this is an EC Regulation, which is immediately applicable in  all EC member States. 
153 Articles 12b and 12d of the GI Regulation. WT/DS174/R/Add.1 
Page A-58  
 
 have the infrastructure or the inclination to present the objection to EC officials.  Making the exercise 
of private rights contingent on actions of government  entities outside the right holder's control fails to 
provide legal means to exercise a private right, as required by Article 22.2 of the TRIPS Agreement. 
 180. Further, Article 12d limits the persons who can  object to an application for registration 
submitted by an EC member State to persons fro m "a WTO member country or a third country 
recognized under the procedure provided for in Article 12(3)", i.e., satisfying the conditions of 
equivalency and reciprocity described earlier in this submission.  It appears that interested parties 
from WTO Members who do not satisfy the conditions of equivalency and reciprocity may not object to the registration of a GI, and therefore do not have the legal means to prevent misleading uses 
required by Article 22.2 of the TRIPS Agreement. 
 181. In addition, the GI Regulation provides, unde r Articles 7, 12b and 12d that only those with a 
"legitimate interest" or a "legitimate economic intere st" have a right to object.  As discussed above, 
the Paris Convention provides that an interested pa rty can be any producer or seller established in the 
region falsely indicated as the source in a given te rritory, which may be different from the region in 
which the false indication is being used.  To the extent that the GI Regulation's requirement means 
that the person must have an  economic interest in the EC
, it is inconsistent with the TRIPS Agreement 
obligation to make legal means available to all "int erested parties" and not just those established or 
doing business in the EC.    
182. Finally, the possible grounds for objection – that the registration of the name "would 
jeopardize the existence of an entirely or partly id entical name or of a mark or the existence of 
products which have been legally on the market for at least five years"
154 – is unduly restrictive and 
does not provide legal means to object to a registrati on in order to prevent "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 geographic area other than the true place of orig in in a manner which misleads the public as to the 
geographic origin of the good" or " any use which constitutes an act of unfair competition within the 
meaning of Article 10 bis of the Paris Convention (1967)." 
 183. Consequently, the EC GI Regulation fails to provide the required legal means to interested 
parties as required by Article 22.2.  
 
E. T
HE EC GI REGULATION IS INCO NSISTENT WITH THE EC'S ENFORCEMENT OBLIGATIONS 
UNDER THE TRIPS  AGREEMENT  
184. Part III of the TRIPS Agreement – "Enforcement  of Intellectual Property Rights" – contains a 
broad range of obligations with respect to the en forcement of intellectual property rights covered by 
the Agreement, which includes trademark rights and rights in geographical indications.  As described 
in section IV.C of this submission, the EC GI Re gulation denies the owner of a registered trademark 
its Article 16.1 exclusive right to prevent all thir d parties from using the same or similar signs for 
identical or similar goods as those for which the tr ademark is registered where such use would result 
in a likelihood of confusion.  Further, the EC GI Regulation does not, with respect to GIs, provide the required legal means to interested parties to prev ent misleading uses or acts of unfair competition.  
Therefore, as summarized below, that Regulati on is also inconsistent with numerous TRIPS 
Agreement obligations to enforce intellectual property rights.   185. Article 41.1 requires that enforcement pro cedures be available to permit effective action 
against any act of infringement of intellectual pr operty rights, and expediti ous remedies to deter 
further infringements.  In contrast, under the EC GI  Regulation, an owner of a registered trademark 
does not have any procedures available to him to ta ke action against infringement of his trademark by 
                                                     
 
154 Article 7(4) of the GI Regulation.  WT/DS174/R/Add.1 
 Page A-59 
 
 
 a registered GI, and has no remedies available to him to deter such further infringements.  The same is 
true of interested parties with GIs based in territories other than the EC. 
 186. Article 41.2 requires that enforcement pro cedures be fair and equitable, and not be 
unnecessarily complicated or costly, or entail unreasonable time-limits or unwarranted delays.  
Article 41.4 requires the opportunity for judicial re view.  Neither of these obligations are satisfied 
with respect to owners of registered trademar ks trying to enforce their Article 16.1 rights vis-à-vis a 
confusing GI or to interested parties with GIs based in territories other than the EC.   
 187. Article 42 requires that civil judicial procedures concerning the enforcement of "any 
intellectual property right" be made available to rightholders.  Article 44.1 requires that judicial 
authorities have the authority to issue orders to  desist from infringement.  As detailed in this 
submission, no such procedures or injunctions are available to owners of registered trademarks vis-à-
vis confusing signs that are registered as GIs.  A nd no such procedures or injunctions are available to 
holders of rights in GIs located in WTO Members that do not satisfy the equivalency and reciprocity 
requirements of the GI Regulation.   
 188. Consequently, the EC GI Regul ation is inconsistent with the TRIPS Agreement obligations to 
enforce intellectual property rights, including Articles 41.1, 41.2, 41.4, 42, and 44.1.   F. T
HE EC GI REGULATION IS INCONSISTENT WITH ARTICLE  65.1  OF THE TRIPS  AGREEMENT  
189. Under Article 65.1 of the TRIPS Agreement, th e EC was obligated to apply the provisions of 
the TRIPS Agreement as of one year after the da te of entry into force of the WTO Agreement, i.e., 
one year after January 1, 1995, or as of January 1, 1996.    190. As demonstrated in this subm ission, the EC GI Regulation is still inconsistent with several 
provisions of the TRIPS Agreement, and conseque ntly also violates Article 65.1 of the TRIPS 
Agreement.    
V. CONCLUSION 
191. For the foregoing reasons, the United States re quests that the Panel find that the EC GI 
Regulation is inconsistent with the EC's obliga tions under the TRIPS Agreement and the GATT 1994, 
and to recommend that the EC bring its measure into conformity with those obligations.   
 WT/DS174/R/Add.1 
Page A-60  
 
 ANNEX A-3 
 
ORAL STATEMENT OF THE UNITED STATES 
FIRST SUBSTANTIVE MEETING 
 
(23 June 2004) 
 
 1. Good morning, Mr. Chairman and members of th e Panel.  We have asked that you review the 
EC's GI Regulation – after five years of fru itless consultations – because it presents two major 
problems seriously affecting the rights of all WTO Members. 
 2. The Regulation sets up what the EC has characterized as a powerful system for registering and protecting geographical indications for agricultura l products and foodstuffs sold in the substantial 
EC market.  According to the EC, this system  bestows significant commercial benefits on those 
persons and products able to qualif y for protection.  The EC has claimed that this system allows 
qualifying EC products to command higher prices in the EC market and to compete favorably based on quality.  Indeed, so commercially meaningful is th is GI protection that, in the eyes of the EC, it 
helps make it politically feasible to reduce or eliminate the EC's agricultural subsidies. 
 3. The problem is that the Regulation denies e qual access to this powerful system of protection 
for non-EC  nationals and products.  Specifically, the Regulation puts in place a mandatory legal 
structure that directly allows only EC nationals to  register and protect their GIs for EC products.  
Non-EC nationals, by contrast, cannot apply at all, unless their government has adopted a system of GI protection that (1) mirrors the EC's and (2) provi des reciprocal protection to EC products – in other 
words, the "equivalence" and "reciprocity" requireme nts.  Further, the non-EC national, unlike the EC 
national, can neither apply for, nor object to, a GI registration directly.  Rather, the non-EC national – 
unlike the EC national – can only hope that his gove rnment will voluntarily put procedures in place to 
process objections according to EC standards and will be  willing to try to convince the EC that (1) the 
government's GI protection system satisfies the EC 's requirements and that (2) the particular GI 
should be registered.    
4. As we detailed in our first submission, these asp ects of the GI Regulation – the requirement of 
reciprocity and equivalence and the requirement fo r government-level intervention – discriminate in 
favor of EC nationals and products and against th e nationals and products of other WTO Members.  
Further, with respect to countries that do happen to  have an EC-equivalent sy stem of GI protection, 
the GI Regulation discriminates in favor of nationa ls and products of those countries and against the 
nationals and products of WTO Member s that do not have such a system.  In other words, the EC's GI 
Regulation violates the national treatment and MFN obligations of the TRIPS Agreement, the Paris 
Convention, and the GATT 1994.  For some of these same reasons, the GI Regulation does not 
provide the legal means required under the TRIPS Agreement for the protection of geographical 
indications.    
5. Further, the GI Regulation grants these significan t protections to EC nati onals and products at 
the expense of rights that the EC is obligated to pr ovide to owners of registered trademarks under the 
TRIPS Agreement.  The TRIPS Agreement requires that WTO Members provide to the owners of 
registered trademarks the exclusive  right to prevent confusing uses of similar or identical signs by all 
third parties .  But under the GI Regulation, registered GIs are immune from the exercise of this right.  
Under the GI Regulation, if a person is using a GI that  consists of the same or  similar signs as a prior 
registered trademark – and does so in a manner that  causes confusion with the trademark – the owner 
of the registered trademark is powerless to prevent that  use.  All that owner can do is continue to use 
his trademark in commerce, watc hing as the ability of that trademark to distinguish his goods is 
eroded away.  This situation is simply not permitted by the TRIPS Agreement.    WT/DS174/R/Add.1 
 Page A-61 
 
 
  
6. My oral statement this morning will focu s on the two principal issues outlined above, 
although I will also briefly touch on other arguments raised by the EC.  In sum, despite its denials and arguments to the contrary, the EC's first submissi on confirms the WTO incons istencies noted above in 
every respect.   
 
National Treatment/MFN 
 
Requirements of Equivalence and Reciprocity  
 7. With respect to the lack of national and MFN treatment in the EC's GI Regulation, there are a 
few key questions that this Panel must examine.  First, and astonishingly, the EC now claims that 
WTO Members do not have to satisfy the equivale nce and reciprocity requirements.  Yet, these 
requirements are clearly set out as preconditions for registering all third country GIs in Articles 12 
and 12a of the EC GI Regulation.  According to  the EC, those requirements would "prejudice" the 
WTO Agreements, under Article 12(1).  The United States is, of course, pleased that the EC has 
finally acknowledged that these requirements ar e inconsistent with WTO obligations.   
 8. Nevertheless, we remain skep tical.  Article 12(1) of the GI Regulation clearly says that the 
Regulation may apply to products from a third country  only if that country meets certain conditions, 
among them equivalence and reciprocity.  These requirements apply with respect to GIs from any 
third country.  There is no exclusion for WTO Me mbers in Article 12(1), even though WTO Members 
are specifically mentioned in other parts of the Regula tion.  Therefore, there is every reason to believe 
that Article 12(1) means what it says.  Of course,  the EC reserves its flexibility to protect specific 
non-EC GIs through bilateral agreements, so Article 12(1) also states that it is "without prejudice to 
international agreements."  But there is nothing in Article 12(1) to suggest that WTO Members are 
excluded from its requirements.   
 9. Further, Article 12a of the Regulation sets out the sole process under the GI Regulation for 
registering non-EC GIs.  But Article 12a provid es such a procedure only for countries that have 
satisfied the requirements of Article 12(1).  Article 12a(1) says that a third country  fulfilling the 
conditions of Article 12(1)  may send a registration application to the Commission.  Article 12a(2) 
describes what the third country  referred to in Article 12(1)  must do to apply for a GI registration on 
behalf of its nationals.  If, as the EC suggests,  Article 12(1) does not apply to WTO Members, 
Article 12a also does not apply to WTO Memb ers, with the consequence that there is no system 
whatsoever  under the GI Regulation for registering GI  products from WTO Members.  The EC has 
asserted that certain of the "third country" procedur es in Article 12a apply to WTO Members, but that 
other references to "third countries", inexplicably, exclude WTO Members.  There is simply no basis 
in the Regulation for picking and choosing which provisions apply to WTO Members and which do 
not.  10. Not only that, but until recently, the EC itself claimed that WTO Members do have to satisfy 
the reciprocity and equivalence requirements.  We ha ve held over five years of consultations, focused 
to a significant degree on the WTO-consistency of the reciprocity and equivalence requirements.  Not 
once  in those five years did the EC mention that  these requirements do not apply to WTO Members. 
 11. To the contrary, the EC's clearly articulated view – at least prior to last month in this 
proceeding – was that (1) agricultural products from a WTO Member are not eligible for GI 
registration in the EC unless that Member satisfies the reciprocity and equiva lence requirements; and 
(2) the United States, for one, does not satisfy those requirements, and so its nationals cannot register 
their US GIs.    WT/DS174/R/Add.1 
Page A-62  
 
 12. We note, for instance, the written submission of the EC to the TRIPS Council, in September 
2002, in which the EC, in describing its GI Registra tion system in the context of TRIPS obligations 
discussed the "fact that the EU register for GIs on f oodstuffs does not allow the registration of foreign 
GI unless it is determined that a third country has an equivalent or reciprocal system of GI protection."
1  Or its statement in that same document that  GI "registration syst ems should be primarily 
aimed at the identification of domestic  GIs."2  Likewise, its admission that the EC GI procedure 
requiring EU member States to verify that products meet the GI definition is "ill-adapted to foreign 
GIs."3   
 13. In addition, there are a number of statemen ts from EC officials in connection with the 
amendments to the EC GI Regulation last year that emphasize the importance to the EC of requiring 
reciprocity and equivalence as a condition of register ing GIs from non-EU countries.  This is touted as 
a means of encouraging the adoption of the EC GI protection system abroad.
4  The references are to 
"non-EU" countries, not "non-WTO Members."    
14. This Regulation has been in place and enforced for almost 12 years.  In that time, according to 
the EC itself, over 640 EC geographical indications have been registered.
5  How many third country 
GIs have been registered?  To our knowledge, none.  Th is is not too surprising, since, at least up until 
last month, the EC has been confirming to WTO Members the plain meaning of the GI Regulation – that their nationals may as well not even apply for a GI unless the WTO Member is prepared to 
convince the Commission that it has a GI system that is  equivalent to the EC's system and that offers 
reciprocal treatment to EC products.  The EC has in effect been demanding that WTO Members adopt 
its system of GI protection, thereby trying to extract from its trading pa rtners through the GI 
Regulation what it could not get dur ing the Uruguay Round negotiations.   
 15. And now the EC wants this Panel to find th at the exact opposite is true, despite the presence 
of the same GI Regulation language – "without prejudi ce to international agreements" – that has been 
in place for almost 12 years and despite the explanations provided by the EC itself during five years of consultations and in several other fora – simply because the EC is now, for purposes of this dispute, 
saying so.  The EC amended this regulation last year  with respect to some aspects of registration and 
objection, but, notably, left this language re garding equivalence and reciprocity untouched.
6 
 
16. With all due respect, this Panel should examin e very thoroughly the factual basis for the EC's 
newfound – and unsupported – interpre tation of its Regulation.  If the EC can objectively establish 
that no requirements of reciprocity and equivale nce apply to WTO Members – despite the clear 
language to the contrary – this clarification will be  welcome.  But mere as sertions by the EC for 
purposes of this dispute are insufficient.  To th e contrary, the plain meaning of the Regulation, 
supported by the repeated assertions of the EC itsel f to WTO Members, demonstrate the contrary.   
 
Equivalence by another name  
 
17. Further, even if the Panel were to agree with  the EC that Article 12(1) does not apply to WTO 
Members and that there is an alternative regist ration process for WTO Members somewhere in the GI 
                                                      
1 IP/C/M/37/Add.1, p. 79.   
2 Id., p. 80 (emphasis added). 
3 Id., p. 80. 
4 See, e.g.,  "Food quality:  Commission proposes better protection for geographical names", IP/02/422, 
Brussels, March 15, 2002.  Exhibit US-22.  See also  Exhibit US-20, p. 3;  Exhibit COMP-14, pp. 20, 21, 23. 
5 See www.europa.eu.int/comm/agriculture/publi/capleaflet/cap_en.htm. 
6 See Council Regulation (EC) No 692/2003 of 8 April 2003 amending Regulation 2081/92, OJ L 99, 
July 14, 2003, p. 1.  Exhibit COMP-1.h.  WT/DS174/R/Add.1 
 Page A-63 
 
 
 Regulation, the EC nonetheless admits that Article 12a(2) requires WTO Members to submit a 
declaration that certain specific inspection structures are "established" on its territory. 
 
(Parenthetically, as I noted a moment ago, Article 12a(2) applies only to third 
countries that have been deemed to satisfy the requirements of reciprocity and 
equivalence under Article 12(3), an article that the EC now says does not apply to 
WTO Members.  So it is not clear on what basis this Article applies to WTO Members at all, under the EC's new interpretation.  But, assuming for the sake of argument that it does,)  
This requirement for inspection structures is tantam ount to a requirement of equivalence, the same 
requirement that the EC itself appears to admit is WTO-inconsistent. 
 18. The purported function of the required "inspec tion structures", which are also required of EC 
member States under Article 10, is to ensure th at any agricultural product or foodstuff bearing a 
protected name complies with the relevant specification.
7  Under Article 10, the inspection authorities 
of a country must have permanent qualified staff and resources "necessary to carry out inspection of 
agricultural products and foodstuffs bearing a protected  name."  One of the requirements of Article 10 
is that if the inspection body establishes that an agricultural product bearing a protected name does not 
meet the criteria in the specification, it must take  all necessary steps to ensure that the EC GI 
Regulation is complied with.    
19. So, in order for its nationals to qualify for GI protection, a WTO Member must establish an 
inspection structure with the authority and the r esources to enforce the EC's GI Regulation and to 
ensure that any agricultural product or foodstuff b earing a protected name qualifies for that name.  
 20. Although the EC calls this requi rement a product "specification", as  if it were related solely to 
whether the product itself qualifies to be a geogra phical indication, this is not really a product 
"specification" in the usual sense.   Instead, it is a requirement th at WTO Members adopt the same 
bureaucratic structures related to the protection of GIs as the EC has.  But other WTO Members have 
the freedom under the TRIPS Agreement to set up a system that is different from the EC's for 
protecting GIs, and the EC cannot make protection of GIs conditional on other Members' adopting an 
EC-style system.  The United States, for one, has not  adopted the EC's approach to protecting GIs, 
and does not necessarily require an EC-style inspec tion structure.  This fact, however, should not 
prevent US nationals from obtaining GI protection in  the EC on the same basis as EC nationals.   
 21. In brief, the EC's requirement that the Unite d States establish EC-style inspection structures to 
enforce GIs is simply equivalence by another name:  The EC will not protect the GIs of US nationals 
unless the United States establishes th e same inspection structures, w ith the same responsibilities and 
resources, that are required of EC member States.  The EC has apparently recognized that it cannot 
require equivalence from WTO Members as a condition for protecting their GIs.  For the same reason, it cannot require WTO Members to establish EC-sty le inspection structures to enforce GIs as a 
precondition.   The GI Regulation discriminates against certain nationals  
 
22. The EC claims that its GI Regulation discriminates based on the location  of the geographical 
area covered by the GI, and not on the basis of nationality.
8  This razor-thin distinction is not 
meaningful, and is certainly not a basis on wh ich to determine whether fundamental TRIPS 
Agreement obligations are being respected.  To the question, "whose GI rights are overwhelmingly 
                                                      
7 Article 10(1) of the EC GI Regulation. 
8 E.g., EC First Written Submission, para. 125. WT/DS174/R/Add.1 
Page A-64  
 
 connected to agricultural products and foodstuffs obtained or produced in the United States," the 
answer is obviously, "nationals of the United Stat es."  To the question, "whose are overwhelmingly 
connected to products produced in the EC," the answ er is, equally obviously, "EC nationals."  No one 
can be under any illusion that, in providing one set of requirements for agricultural products grown in 
the EC and a more burdensome set for agricultura l products grown outside the EC, non-EC nationals 
are being treated less favorably than EC nationals w ith respect to the protection of their geographical 
indications.  One might just as easily argue that a regulation directed at large white birds with long 
necks swimming in Lac Leman is not directed at swan s, or that a regulation directed at birds that 
quack has nothing to do with ducks.  Rights in GIs, perhaps to a greater extent than other forms of 
intellectual property, are inherently rela ted to the territory of the national.  
 
23. A US national growing a special onion in a particular region in the Southeast United States is, under the TRIPS Agreement, entitled to obtain geogr aphical indication protection for his product on 
terms that are at least as favorable to those acco rded to, for example, French nationals for their 
products.  That US national, who has perhaps bu ilt up the quality and reputation of his product over 
many years, is simply not in the same position as a similarly situated French national in France to 
apply for, register and protect his GIs in the EC.  Nor does he have any means of obtaining the same 
treatment as his French counterpart.  He can't simp ly move his farm to France and qualify for GI 
protection, because the reputation and quality of his product is connected with its geographic area in 
the United States.  It is simply not enough for the EC to assert that the location of the geographic area has nothing to do with nationality:  this US person cannot protect his GI in the EC under the GI 
Regulation because  of his US location.  Further, if prev ious WTO dispute resolution findings with 
respect to national treatment in the goods area provi de any guidance, US nationals are entitled to the 
best treatment granted to any EC national, which is the treatment granted the EC national with a GI in 
the EC.  
24. To highlight the problem further, the Pa nel should recall that, under the TRIPS Agreement 
and the Paris Convention, "nationals" of a Memb er include legal persons  who have a commercial 
establishment in that Member.  So, if the US national at issue is a corporation or partnership running an onion farm in the United States, the only way that it could get the same treatment as a French national would be for it to establis h a farm growing onions in the EC .  But this is tantamount to a 
requirement that the farm move or expand its commercial establishment to the EC, which would mean 
that it would qualify under the TRIPS Agreement as an EC national.   
 25. In other words, as applied to legal persons  such as a farm, "national" treatment for US 
nationals is available under the GI Regulation only if the US national becomes an EC national .  (Of 
course, such a move would eliminate the ability to  register the foreign GI, as the goods would no 
longer have a quality, reputation, or other characteristi cs essentially attributable to their location.)     
 26. This requirement subverts the whole purpose of the national treatment requirement.  The EC 
is supposed to give national treatment to nationals of the United States, not give national treatment to 
any US national who agrees to become an EC national.  Yet, this is the practical effect of the EC's 
restrictive definition of "national treatme nt" and "most favored nation treatment".  
 
27. It is also one reason that the EC is wrong to  argue that the US "national treatment" claim does 
not include Article 2, paragraph 2 of the Paris Conve ntion.  This paragraph of the Article 2 national 
treatment provision prohibits requiring establishment in the country where protection is claimed as a condition of enjoying rights.  In this instance, the GI Regulation's requirement for a commercial 
establishment in Europe as a precondition to claimi ng the same rights as nationals is simply another 
aspect of its denial of national treatment to nationa ls of other WTO Members, a claim clearly within 
this Panel's terms of reference.    WT/DS174/R/Add.1 
 Page A-65 
 
 
 Requirement that the WTO Members in tervene on behalf of their nationals 
 
28. As the US first submission stated, anothe r way the EC GI Regulation denies national and 
MFN treatment, and also fails to provide legal mean s for interested parties to protect GIs, is its 
requirement that a non-EC national's government  take action in order for its national  to protect its GI 
rights.  For GI registration applications, the WTO Member government has to determine that the 
application meets the EC GI Regulation's requirement s, has to demonstrate to the EC how the GI is 
protected in that country, and has to demonstrat e that it has established the necessary "inspection 
structures", discussed earlier.  And this is assuming,  for the sake of argument, that the WTO Member 
does not also have to convince the Commission that  it has satisfied the requirements of equivalence 
and reciprocity.  Even for objections to GI a pplications, the WTO Member has to process that 
objection and present it to the Commission.  The non-EC interested party has no ability to do that himself directly.    29. Now, the EC has a glib res ponse to this argument: "The United States should not invoke its 
unwillingness to cooperate", says the EC, "to demonstrat e a national treatment violation by the EC".  
This response avoids the issue.  The issue is not whether the United States itself is willing to, as the 
EC puts it, "cooperate" with the EC's GI registra tion process.  The issue is whether, under the GI 
Regulation, a non-EC national  has the same direct means to register his GI in the EC or to object to 
the registration of a GI in the EC, as does the EC national.  He does not:  the non-EC national has to 
go through a non-EC government that, unlike EC member States, is under no obligation to process GI 
registration applications or objections. 
 30. The EC tries to sell this requirement as "equa l" treatment, because EC nationals must also 
apply to their member State governments for regist rations and objections, and EC member States also 
have to have inspection structures in place.  But this  is a false "equality".  The EC can, and in the GI 
Regulation does, impose substantive and procedural  requirements on its member States.  The GI 
Regulation, therefore, directly provides the means in the EC for EC nationals to register their GIs and 
to object to the registration of GIs.  The TRIPS national treatment requirements are not satisfied by imposing the same requirements on WTO Members as the EC imposes on its member States.  The TRIPS requirement is that the nationals  of WTO Members are entitled to treatment at least as 
favorable as that accorded to EC nationals.  
 
31. In sum, the GI Regulation provides the dir ect means, through mandatory enforceable rules 
imposed on its member States, and through the in frastructure and bureaucracy established under the 
European Union, for EC nationals to register their GIs and to object to the registration of GIs.  A non-EC national, by contrast, does not have those means, but must hope that its government will 
voluntarily put in place the necessary rules, regul ations and infrastructure to process EC GI 
applications and objections, and will advocate to  the Commission on behalf of its nationals.   
 32. This does not provide equal treatment to non-EC nationals, and it does not provide non-EC 
interested parties with the legal means to protect GIs.    
33. As the US and EC first submissions demonstrate, the issues we have just discussed cut across 
a number of the US claims, and demonstrate how, despite the EC's arguments to the contrary, the EC GI Regulation denies national treatment and most-fa vored nation treatment with respect to both the 
nationals and the products of other WTO Members, and fails to provide the legal means to protect 
GIs.  Before moving on to the trademark issue, we do want to respond briefly to a number of the EC's 
arguments that are specific to particular claims.   
 WT/DS174/R/Add.1 
Page A-66  
 
 Responses to other arguments 
 
34. First, the GI Regulation says that any EU na tional who is "legitimately concerned" may object 
to a GI registration, while non-EC nationals must ha ve a "legitimate interest" in order to object.  The 
EC responds that there is no difference between th e two standards.  The United States submits to you, 
however, that a person may be "concerned" without his concern rising to the level of a "legitimate 
interest".  The "legitimate interest" standard for non- EC nationals was introduced just last year; if the 
EC meant for the standard to be the same, why not use the same words?  The EC has not sustained its 
burden of rebutting the presumption that this amounts to less favorable treatment.   
35. Second, with respect to the special rule that  non-EC GIs must be accompanied by a country of 
origin indication on its label, the EC claims that th is rule applies to both EC  and non-EC products, and 
that, in any case, country of origin marking requirements can never give rise to a national treatment violation.  The provision at issue, however, is in Article 12(1), which deals exclusively with the 
authorization of non-EC GIs, not EC GIs.  In additi on, this provision is not a general country of origin 
requirement as described in Article IX of the GATT 1994;  rather, it is a special rule that is triggered 
by the fact that a third country product is charact erized as a GI, and is intended to encumber the non-
EC GI itself.   36. Third, the EC argues that there is no MFN violation because the GI Regulation has not yet been applied to discriminate among WTO Members.   But the United States is challenging this 
measure on its face, not any particular  application of the measure.  The fact is that Articles 12(1) and 
12a of the GI Regulation are designed purely to favor  nationals from countries that have an EC-style 
GI protection system, including inspection structures,  and to disfavor nationals from countries that 
don't.  This is contrary to MFN obligations.   
37. The EC also argues that it s member States are entitled to treat other nationals from the EC 
more favorably than nationals from other WTO Members, because they are doing so pursuant to an EC regulation.  But each EC member State has an obligation to provide MFN treatment vis-a-vis  
nationals of all other WTO Members.  That they may be acting pursuant to an EC regulation does not 
excuse them from this obligation.   
38. Fourth, the EC claims that the less favorable treatment provided non-EC products is excused 
by Article XX(d) of the GATT 1994.  The EC has not made out a prima facie  case that this is so, but 
has merely asserted it.  This Panel should reject this  argument on that basis alone.  The GI Regulation 
does not satisfy the requirements of Article XX(d):  it  is not necessary to ensure compliance with laws 
or regulations that are not inconsistent with the GATT 1994.  
 
39. Finally, the EC claims that the enforcemen t obligations of the TRIPS Agreement do not apply 
to the GI Regulation, because that Regulation d eals only with the acquisition and enforcement of 
intellectual property, and not with enforcement.  This is incorrect.  The TRIPS Agreement requires 
enforcement procedures to permit effective action against any act of infringement of the covered 
intellectual property rights.  The GI Regulation prevents trademark owners, for instance, from 
enforcing their Article 16.1 rights with respect to regist ered GIs.  This is plainly inconsistent with the 
obligation to provide such enforcement.   
Trademark Rights 
 40. We would like to spend the balance of our time discussing the trademark right issue.  We start 
by noting that, within a span of just a few pages,  the EC's submission states that:  (1) there is no 
hierarchy between GIs and trademarks; (2) the Unit ed States is trying to establish a hierarchy of 
trademarks over GIs; and (3) the proper balance is to  provide GIs with rights superior to trademarks: 
that is, that TRIPS permits GIs to prejudice " any right " of trademark owners, with the only exception  WT/DS174/R/Add.1 
 Page A-67 
 
 
 being certain grandfathered trademarks that can be  "used" in commerce but that are deprived of the 
critical ability to exclude confusing uses by all others.9  Interestingly, the EC derives this far-reaching 
ability to prejudice all trademark rights from, of all places, an article providing for exceptions, not to trademark rights, but to GI rights.   
41. The EC's assertions notwithstanding, the Un ited States agrees that there is no hierarchy 
between trademarks and GIs.  In fact, the United Stat es took great pains in its first submission to make 
it clear that is important to give all of the TRIPS provisions their full scope.  There is no inconsistency 
between the obligation to provide trademark owners with the right to exclude uses by all others of 
signs that are likely to confuse consumers, on the one hand, and the obligation to give interested 
parties the ability to prevent misleading uses of GIs,  on the other.  The issue is not whether one form 
of intellectual property is "superior" to another, as the EC claims, but how to provide the rights set 
forth in the TRIPS Agreement in a manner that gives full affect to all of its provisions.    42. In other words, the EC's characterizations of the US position are wrong.  We'd like to 
emphasize certain basic points that set the relationshi p between trademarks and GIs in context.  First, 
trademarks that lack distinctiveness or that mislead  consumers as to the origin of goods may, under 
the TRIPS Agreement and the Paris Convention, be re fused registration.  If they are registered, such 
marks may be subject to invalidation.  The EC's c oncerns on this score, therefore, are misplaced.  The 
United States was clear in its first submission that this dispute concerns valid prior trademarks, not 
trademarks that are subject to invalidation un der the TRIPS Agreement and the Paris Convention.
10 
 
43. Second, despite the EC's suggestions to the c ontrary, it is not the position of the United States 
that a trademark owner will necessarily succeed in an action against a GI owner.  For example, if a 
trademark owner brings an infringement action against the user of a similar or identical GI, the trademark owner might not be able to prove that the particular use of the GI would result in a 
likelihood of confusion.  Or the GI owner might be  able to show that the trademark is subject to 
invalidation.     44. With this understanding as a backdrop, let us now respond briefly to the EC's arguments with 
respect to trademark rights.    Article 14(3) of the EC GI Regulation  
 
45. The EC appears to argue that, under the GI Re gulation, owners of registered trademarks do 
not need the Article 16.1 right to exclude all ot hers from confusing uses of their signs, for two 
reasons.  First, the EC argues that it is unlikely that  any trademarks would be registered that could be 
confused with a GI ( i.e., the risk of confusion is "limited").
11  Second, the EC argues that Article 14(3) 
allows it to prevent the registration of all geographical indications that are confusing vis-a-vis  certain 
trademarks.  46. But neither of these arguments addresses the ma in point, which is that the TRIPS Agreement 
requires that the owner of a registered trademark be able to exclude all others  from the confusing use 
of identical or similar signs.  And that the EC  GI Regulation does not accord or even accommodate 
that right with respect to registered GIs.  47. The EC's argument, in essence, is to concede th at owners of registered trademarks are being 
deprived of their TRIPS Agreement right s, but to claim that they do not need  those rights, because 
                                                     
 
9 EC First Written Submission, para. 301. 
10 E.g., US First Written Submission, para. 135. 
11 EC First Written Submission, para. 275. WT/DS174/R/Add.1 
Page A-68  
 
 Article 14(3) of the EC GI Regulation ensures that confusing GIs will not be registered in the first 
place.  48. This is not good enough, nor is it true.  Th e TRIPS Agreement requires that trademark owners 
be given a certain exclusive right, and the EC can not legitimately respond that the right can be 
withheld because it is unnecessary.   
 49. Moreover, it is untrue that the Article 16.1 right to exclude is unnecessary.  First, the EC 
argues that few trademarks that contain or consist of a GI are registrable, and that the United States is therefore making much ado about nothing.  Even if the Panel accepts the unsupported assertion that 
the number of trademarks affected is small, how ever, it is beyond dispute that those registered 
trademarks – whatever their number – must be acco rded Article 16.1 rights.  It is no defense to a 
WTO violation to claim that the number of specific rights affected is small.  50. In addition, however, it is simply untrue that  valid registered trademarks cannot incorporate 
certain "geographical" elements.  Take the hypothe tical example of an EC registered trademark, 
"Luna", used in connection with ch eese.  Assume that the residents in the small town of Luna, Spain, 
start making cheese after the "Luna" mark was regist ered.  If that cheese subsequently qualifies for GI 
protection, it would be eligible for registration as a GI, and, once registered, the owners of the "Luna" 
trademark would be powerless to stop the rightholder s of the "Luna" GI from using the "Luna" name 
in a way that confuses the consumer.  This is si mply not a result permitted by Article 16.1 of the 
TRIPS Agreement.  This is only a hypothetical, ad mittedly, but in fact there are thousands of 
registered trademarks around the world that incorpor ate or happen to sound like geographical names.   
 51. Second, contrary to the EC's arguments, Ar ticle 14(3) of the GI Regulation does not satisfy 
the obligations under Article 16.1 of the TRIPS Ag reement.  Article 14(3), the Panel will recall, 
allows the EC to reject GI registrations where, in  the light of a trademark's reputation and renown and 
the length of time it has been used, the GI regist ration is liable to mislead the consumer as to the 
identity of the product.    52. This standard does not satisfy the TRIPS Ag reement obligations for several reasons.  To 
begin, it applies criteria that are different from a nd more restrictive than Article 16.1.  Article 16.1 
requires that the owner of a registered trademark have the exclusive right to prevent all uses of 
identical or similar signs that result in a likelihood of  confusion.  This is not a right reserved solely to 
registered trademarks of a certain reputation or of any particular renown, nor is there any requirement 
under Article 16.1 that the trademark be used for an y length of time.  Article 16.1 articulates a right 
that is owed under the TRIPS Agreement to the owner of any valid registered trademark.  
Article 14(3), by contrast, comes into play only wh ere there exists a trademark with a reputation, 
renown, and history of use.    53. Now, the EC implies that Article 14(3) actually  permits the EC to block registration of a GI 
whenever there is a likelihood of confusion with a re gistered trademark, regardless of use, reputation 
or renown of the trademark.  But that is not what  Article 14(3) says:  Article 14(3) clearly requires 
reputation, renown and use for some period of time.   The EC not only confirms this reading in 
paragraph 290 of its submission, it has also confirme d this obvious meaning in its public explanations 
of its regulation outside of this meeting room.  Thus, although the EC criticizes the United States in 
this room for characterizing Article 14(3) as requi ring "long use", the EC itself uses the phrase "used 
for a long time" in describing the requirements of  Article 14(3) outside this room, as our Exhibit 
US-23 shows.
12   
 
                                                      
12 See also  Exhibit US-24.  WT/DS174/R/Add.1 
 Page A-69 
 
 
 54. In any event, Article 14(3) does not, as re quired by Article 16.1 of the TRIPS Agreement, 
provide the trademark owner  with the right to prevent confusing uses.  It merely authorizes the EC to 
decline registration of a GI in limited circumstan ces.  These are two different things.  Moreover, 
Article 14(3) does not afford the tradem ark owner the right to ensure that no uses of that GI will result 
in a likelihood of confusion.  Thus, even if Artic le 14(3) accorded rights to trademark owners rather 
than just authority to the EC, the trademark owner would not necessarily be able to tell, at the time of 
registration of the GI, whether the use of the GI will be confusing.  For example, a registered GI may 
unexpectedly be used in translation, or in a manne r that emphasizes certain aspects or letters of the 
geographical name, in a way that causes a likeli hood of confusion with respect to a registered 
trademark.   
 
55. Take the EC's own example of the GI "Bay erisches Bier", which the Commission decided to 
register despite concerns raised under Article 14(3) that it could confuse the consumer in relation to 
the "Bavaria" trademark in Holland.  The Commissi on may have well been right that the reputation 
and renown of those trademarks were not such that the registration  of the GI "Bayerisches Bier" is 
liable to mislead the consumer as to the identity of the product.  But, once that GI is registered, how 
does the Commission ensure that the GI is not used in Holland, perhaps translated as "Bavaria Beer" – 
perhaps using signs similar or identical to those of the "Bavaria" trademark –  in a manner that results 
in a likelihood of confusion?  If the use of a GI  confuses the consumer, shouldn't the trademark owner 
have the ability to prevent that use?  TRIPS Article  16.1 says yes.  The EC GI Regulation says no.   
 
56. In short, the decision under Article 14(3) on whether to register a GI is distinct from the 
ability of a registered trademark owner to exercise its TRIPS Article 16.1 rights once it is registered.  
The EC cannot invoke the former to implement the latter.    
TRIPS Article 24.5  
 
57. The EC next argues that TRIPS Article 24.5 defines the boundary between trademarks and GIs, and that it specifically permits the EC to prejudice the Article 16.1 right of prior trademark 
owners – that is, the exclusive right to prevent all third parties from using identical or similar signs in 
a manner that results in a likelihood of confusion.
13   
 
58. But the EC is wrong.  Article 24.5 is merely an exception to the obligation to protect GIs.  
Just as there are exceptions to patent obligations in the patent section of TRIPS (Article 30, in 
Section 5), exceptions to copyright obligations in  the copyright section of TRIPS (Article 13, in 
Section 1), exceptions to trademark obligations in  the trademark section of TRIPS (Article 17, in 
Section 2), there also exist exceptions to GI obligat ions in the GI section of TRIPS (Article 24, in 
Section 3).  Each of these articles, including Article 24, is explicitly labeled "exceptions", and they are 
exceptions only to the obligations arising in the section in which they are found.    59. Article 24.5, therefore, is an exception to  the scope of protection for GIs, an exception that 
protects certain grandfathered trademarks.  It pr ovides that measures adopted to implement the GI 
section of TRIPS "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 the trademark is identical or similar to a 
geographical indication.  The plain meaning of th is provision is that, in whatever respect the 
implementation of the GI section of TRIPS might otherwise prejudice the registration, eligibility for registration, or the use of a grandfathered trademar k, Article 24.5 will prevent that result. The EC's 
argument, by contrast, transforms a provision that plainly protects  certain grandfathered trademarks 
into a provision that empowers it to prejudice  trademarks.  
 
                                                     
 
13 EC First Written Submission, paras. 298, 301. WT/DS174/R/Add.1 
Page A-70  
 
 60. The EC's reading appears to hinge on the Article 24.5 obligation that GI measures not 
prejudice the "right to use the trademark."  Th e EC argues that the GI Regulation permits the 
continued "use" of the trademark in commerce, and therefore does not prejudice the "right to use the 
trademark", satisfying the Article 24.5 requirement .  But the EC ignores two important facts.   
 
61. First, Article 24.5 also contains a separate obligation not to prejudice the eligibility for or the 
validity of the registration of trademarks.  The EC  seems to think that this is a mere technical 
requirement that is satisfied by simply maintain ing a registration on the books.  But under the TRIPS 
Agreement, "registration" of a trademark means some thing very specific:  the owner of a registered 
trademark has a certain right to exclude all others from the use of confusingly similar signs.  Where, 
under Article 24.5, a Member cannot prejudice the validi ty of a trademark registration, the registration 
remains valid and the rights that go with that regist ration under Article 16.1 remain in force.  In this 
way, Article 16.1 provides a sword to registered tr ademark owners, while Article 24.5 shields against 
anything in the GI section that could ad versely affect grandfathered trademarks. 
 
62. Article 24.5 cannot be read so as to require only that a name appear on the list of registered 
trademarks, but that all rights connected with that registration can be denied.  Without the associated rights, "registration" is virtually meaningless.   63. Second, the EC seems to read the Article 24. 5 obligation not to prejudice the right to use a 
trademark as affirmative permission to prejudice th e Article 16.1 right to exclude all others from 
confusing uses.  But the fact that the TRIPS negotiators included both a prohibition on prejudicing 
uses and a prohibition on prejudicing registration, do es not mean that the rights associated with 
registration are to be ignored.    64. The November 1990 "Brussels Draft" of the TR IPS Agreement contained a predecessor to the 
current Article 24.5 requiring that registrations of  grandfathered trademarks not be refused or 
invalidated.  It made no mention of "use" of the trademarks.
14  This obligation, taken alone, means 
that registered trademarks remain registered and therefore benefit from their Article 16.1 rights.  A reading that the trademarks remain registered but ar e deprived of all of the rights of registration would 
make no sense.  Subsequently , the negotiators added an additional  requirement that the use of such 
trademarks should also not be prejudiced on the grounds  that they are similar to a GI.  It is this 
additional  obligation that the EC is now using to assert that the only trademark right preserved under 
Article 24.5 is the right to use the trademark in commerce, and that Article 24.5 no longer preserves the right to exclude all others.  In other words, the EC is reading the language that clarifies  and adds  
to the protection for grandfathered trademarks as a denial  of the key protection given specifically to 
grandfathered trademarks: the right to exclude.  
 
65. In addition, during this same period, the nego tiators tightened the requirement not to "refuse 
or invalidate" trademark registrations up to a require ment not to even "prejudice" the validity of such 
registrations or the right to use the trademark.  This emphasizes further that the negotiators were 
increasing the protection of grandfat hered trademarks, not reducing it. 
 
66. The EC's interpretation, therefore, simply  makes no sense from the ordinary meaning of the 
text, and is contradicted by the negotiating history.  67. Further, the EC's interpretation of these term s is inconsistent with their context.  When 
Article 24.5 refers to the "right to use a trademark" , the Panel should keep in mind that a trademark is 
"used" by its owner – how? – to distinguish his good s from the goods of others.  If that owner is not 
able to exclude all others from using confusingly similar signs – i.e., to maintain the distinctiveness of 
his trademark as a source-identifier – his ability to  use the trademark to distinguish his goods is 
                                                     
 
14 See Exhibit US-25.  WT/DS174/R/Add.1 
 Page A-71 
 
 
 severely prejudiced.  As recognized by Advocate Genera l Jacobs of the European Court of Justice in 
HAG II,15 a trademark can only fulfill its role of identifying the manufacturer and guaranteeing 
quality if it is exclusive:  the exclusive right of tr ademark owners to prevent confusing uses is the core 
of the trademark right.16  As the EC itself suggests, the TRIPS Agreement negotiators knew how to 
draft a provision that required some accommodation be tween the rights of different right holders, for 
instance, in the area of two homonymous wine GIs.  Article 24.5 is not such a provision. 
 68. The EC questions why certain wine labeling regul ations in the United States appear to permit 
grandfathered trademarks to co-exist with later geographical indications.  Although this question is 
not relevant, as this dispute involves neither wine nor US regulations, suffice it to say that, even 
where the wine labeling regulations permit the use of  terms that may be similar to trademarks, US 
courts have confirmed that the tr ademark owner fully retains his exclusive right to prevent confusing 
uses of his signs.   
Article 24.3 of the TRIPS Agreement  
 
69. Having failed to show that Article 14(3) of  the GI Regulation provides TRIPS Article 16.1 
rights to trademark owners, and having failed to show that Article 24.5 of the TRIPS Agreement 
permits the EC to prejudice those rights freely, th e EC next argues that Article 24.3 of the TRIPS 
Agreement requires  the EC to deprive trademark owners of their Article 16.1 rights.  According to the 
EC, this is because Article 24.3 requires that, in im plementing protections for GIs, a Member may not 
diminish the protection of GIs that existed befo re the TRIPS Agreement entered into force.  
Therefore, according to the EC, Article 24.3 re quires the EC to maintain "co-existence of 
geographical indications and earlier trademarks."
17 
 70. This view is misguided.  To begin, as in the case of Article 24.5, Article 24.3 is an exception 
with respect to the implementation of the GI section of the TRIPS Agreement.  It is not an exception 
to the implementation of the trademark obligations.  The meaning of Article 24.3 is that GIs should be 
protected in accordance with the GI section of the TRIPS Agreement, but that the protection provided 
those GIs should not diminish the protections for GIs that existed when the TRIPS Agreement came 
into force.  Article 24.3 does not impose any such  exceptions on the obligation to provide trademark 
rights under Article 16.1.  
 
71. Under the EC's interpretati on, Article 24.3 would create a major and permanent exception to 
the trademark section  of the TRIPS Agreement.  It would require a Member to apply all aspects of a 
pre-TRIPS GI regime to all GIs – including those re gistered after January 1, 1996 – even though this 
means that the Member would never  fully implement the rights granted trademark owners by 
Article 16.1. 
 72. The Panel should recall that the TRIPS Agreem ent text, and Article 24.3 in particular, was 
essentially agreed to by December 1991, three years before the WTO Agreemen t came into force.  
The EC GI Regulation entered into force a year and a half later, on June 5, 1993.  Under the EC's 
expansive reading of Article 24.3 – that is, requiri ng a freezing of GI protection systems regardless of 
any WTO obligation (and not just the GI obligations) –  a Member could have put in place a GI 
"protection" regime that exempted GI owners fro m the copyright and patent disciplines, or, indeed, 
any other WTO obligations, and then pointed to Artic le 24.3 as a broad exception to those obligations.   
 
                                                     
 
15 Exhibit US-9. 
16 Exhibit US-9. 
17 EC First Written Submission, para. 312. WT/DS174/R/Add.1 
Page A-72  
 
 73. Plainly, this reading is incorrect.  Articl e 24.3 is an exception to the implementation of 
protections for GIs, not an exception to the implementation of trademark – or other WTO – 
obligations.   
Article 17 of the TRIPS Agreement  
 
74. Finally, the EC argues that, as permitted by Article 17 of the TRIPS Agreement, the GI 
Regulation constitutes a limited exception to trademark protection – the fair use of descriptive terms – 
that takes account of the legitimate interests of the owner of the trademark and of third parties.   
 
75. The EC's assertions would be more credible if the EC had not specifically rejected  a proposed 
amendment to Article 14(2) of the GI Regulation that  would have clarified that the trademark rules on 
"fair use" exceptions apply to GIs.
18  But this amendment was rejected in favor of the much broader 
"exception" provided for under the GI Regulation.  A limited exception to trademark protection, such 
as that provided by a "fair use" ex ception, takes account of the leg itimate interests of the trademark 
owner and of third parties on a case-by-case basis,  depending on the manner in which a descriptive 
term is used.  For example, it should be possible to inform consumers about the origin of a product 
and its characteristics through the use of descr iptive terms in a non-trademark sense without 
affirmatively confusing the consumer about the sour ce of the goods.  It is possible simultaneously to 
protect the legitimate interests of the consumer, the GI owner and the trademark owner.  The GI 
Regulation makes no such distinctions, however, but simply offers a broad immunity against actions 
by trademark owners, based purely on whether a particular GI has been registered.  Further, with 
respect to the scope of the so-called "exception", the GI Regulation entirely eliminates the trademark 
holder's right to prevent confusing uses by all othe rs, which is the whole core of his legitimate 
interest.  This is not a limited exception and it does not take into account the legitimate interests of the 
owner of the trademark or, indeed, of the consum er.  Consequently, the EC GI Regulation does not 
satisfy the requirements of Article 17 of the TRIPS Agreement.  
 
Conclusion 
 
76. Mr. Chairman, members of the Panel, this concludes the oral presentation of the United States this morning.  We thank you for your  attention and, indeed, for your willingness to serve on this Panel 
to review the important issues presented by this di spute.  We look forward to our further discussions 
this afternoon and tomorrow.   
                                                     
 
18 See Exhibit US-21.  WT/DS174/R/Add.1 
 Page A-73 
 
 
 ANNEX A-4 
 
REPLIES BY THE UNITED STATES TO QUESTIONS POSED BY THE PANEL 
AND THE EUROPEAN COMMUNITIES TO THE COMPLAINING PARTIES 
FOLLOWING THE FIRST SUBSTANTIVE MEETING 
 
(8 July 2004) 
 
Q1. To what extent is the Panel bound by the EC's interpretation of its own Regulation?  
USA, AUS, EC  
 
Response:  
 
1. The Panel is not bound by the EC's interpreta tion of the GI Regulation.  The Panel is charged 
under Article 11 of the DSU with making "an objective assessment of the matter before it, including 
an objective assessment of the facts of the case ..."  Therefore, as the Appellate Body has emphasized, 
for instance, in India – Patents (US) ,1 panels often must make a deta iled examination of the domestic 
law of a Member in order to assess the conformity of that law with WTO obligations.2  I n  t h i s  
capacity, the Panel is a finder of fact: the Panel shoul d "establish the meaning" of municipal law, "as a 
factual element", to "check whether these factual elements constitute conduct" contrary to WTO law.3  
The party asserting the inconsistency – in this disput e, the United States and Australia – has the initial 
burden of setting out evidence and arguments sufficien t to demonstrate the inconsistency; if that 
burden is met, it is up to the responding party – the EC – to bring forth evidence and arguments to disprove the claim.    2. In conducting the analysis of municipal la w, panels and the Appellate Body have stated 
expressly that "we are not bound to accept the interpretation [of municipal law] presented by the 
[responding Member]".
4  In India – Patents (US) , the Appellate Body pointed out that if the panel 
were obliged to accept the interpretation of munici pal law offered by India in that dispute, the 
consequence would be that "only India can assess whether Indian law is consistent with India's 
obligations under the WTO Agreemen t. This, clearly, cannot be so."5  In that dispute, India's 
explanation for certain "contradictions" in its mu nicipal law was rejected by the panel and the 
Appellate Body.6  Further, for panels to accept uncritically  the responding Member's interpretation of 
its own municipal law would preclude them from making their own "objective assessment" of the 
matter, including the "factual element" of municipal law.7  
 
                                                      
1 Appellate Body Report, India – Patent Protection for Pharmaceutical and Agricultural Chemical 
Products ("India – Patents (US) " , WT/DS50/AB/R, adopted 16 January 1998), para. 66 ("It is clear that an 
examination of the relevant as pects of Indian municipal law …is essential to determining whether India has 
complied with its obligations under Article 70.8(a).  There was simply no way for the Panel to make this 
determination without engaging in an examination of Indian law.") 
2 See also  Appellate Body Report, India – Patents (US) "), para. 67; Appellate Body Report, United 
States – Anti-Dumping Measures on Certain Hot-Rolled Steel Products from Japan ("US – Hot-Rolled Steel ") , 
WT/DS184/AB/R, adopted 23 August 2001, para. 200; panel report, United States – Sections 301-310 of the 
Trade Act of 1974 ("US – Section 301 Trade Act ") , WT/DS152/R, adopted 27 January 2000, para. 7.18; Panel 
Report, United States – Anti-Dumping Act of 1916 – Complaint by the European Communities ("US – 1916 Act 
(EC) ") , WT/DS136/R and Corr.1, adopted 26 September 2000, as upheld by the Appellate Body Report, 
WT/DS136/AB/R, WT/DS162/AB/R, paras. 6.48-6.50. 
3 Panel Report, US – Section 301 Trade Act , para. 7.18. 
4 Panel Report, US – Section 301 Trade Act , para. 7.19. 
5 Appellate Body Report, India – Patents (US) , para. 66. 
6 Appellate Body Report, India – Patents (US) , para. 70. 
7 See Panel Report, US – 1916 Act (EC) , para. 6.48. WT/DS174/R/Add.1 
Page A-74  
 
 3. Although panels are not bound by the interp retation offered by a responding Member of its 
own legislation, the panel in US – Section 301  suggested that the responding Member "can reasonably 
expect that considerable deference be given to its views on the meaning of its own law."
8  However, 
in making an objective assessment, panels must criti cally review the interpretation offered, as they 
would critically review any other evidence pertaining to the facts.  In that respect, panels should 
weigh the circumstances carefully and determine what credibility to ascrib e to the interpretation 
offered.  4. In some circumstances, the interpretation ma y be the result of other legal instruments that 
pre-date the dispute.  Thus, the panel in US – Section 301  accorded particular credibility to the 
interpretation given by the United States to its la w because that interpretati on was reflected in an 
authoritative statement of administrative action ("SAA" ), issued by the President prior to the dispute, 
and approved by the US Congress.
9  
 5. In this dispute, by contrast, the question is perhaps not how much weight to give to the EC's 
interpretation, but which of the conflicting interpre tations to take into account: that consistently 
provided to WTO Members in the years leading up to the EC's first written submission in this 
proceeding, or that provided for the very firs t time in the EC's first written submission.   
 6. Related to this question are the questions of  the Panel to the EC concerning whether the 
Commission's interpretation of Regulation No. 208 1/92 is "binding on the European Communities" 
(question 15); what would be the most authoritative statement of the interpretation of the Regulation 
in European Community law (question 15); and wh ether the EC member States and the Council are 
bound by the Commission's interpretation of the Regulation (question 70).  7. As these questions also bear on the weight that the Panel should give to the Commission's 
interpretation of this measure in this dispute, th e United States would like to offer its views on these 
questions.   8. According to Article 220 of the EC Treaty, the Court of Justice of the European Communities ("ECJ") and the Court of First Instance are respons ible for "ensuring that in the interpretation and 
application" of EC law "the law is observed".
10  The Court has interpreted this provision to mean that 
it is the "ultimate interpretive authority in relation to the EC Treaty."11  The ECJ is the highest court of 
EC law, and only its interpretation of the EC GI Regulation would be binding  on the institutions and 
member States of the EC.  Although it is true that  in many, if not all, WTO Members, the highest 
authority for interpretation of a domestic law is th e courts, there are particular aspects of the EC 
system that are distinct from other Members' systems and that are relevant to the Panel's consideration 
of the evidence in this dispute. 
 9. For instance, the EC Treaty specifically envisages that the Commi ssion may incorrectly 
interpret or apply EC law, and the Treaty lays dow n judicial procedures for action to be taken against 
the Commission (Articles 230 and 232 of the EC Treaty).  This underscores that, in EC law, the 
                                                     
 
8 Panel Report, US – Section 301 Trade Act , para. 7.19 
9 See Panel Report, US – Section 301 Trade Act , paras. 7.111 and 7.112. 
10 The EC Treaty provisions discussed in this response are included as Exhibit US-26. 
11 EU Law (2nd edition), Craig and De Burca, p. 30.  Exhibit US-27.  See also  the ECJ's Opinion 1/91 
on the Draft European Free Trade Agreement, [1991 ] I-ECR 6079, para. 35, where the ECJ explains that, "in the 
allocation of responsibilities defined in the Treaties", it has the "exclusive jurisdiction" for ensuring that "the 
law is observed".  Exhibit US-28.  In the ECJ's Opinio n 1/92, also on the Draft Eu ropean Free Trade Agreement, 
[1992] I-2821, para. 22, the ECJ states that its decisions are "binding" in the Community legal order, pursuant to 
Article 220 of the EC Treaty (formerly Article 164).  Exhibit US-29.  WT/DS174/R/Add.1 
 Page A-75 
 
 
 Commission's interpretation of EC law does not appear to have any special authority under EC law 
itself and may in fact be wrong.  10. A good example of this is the so-called "com fort letters" issued by the Commission in the 
exercise of its powers in the field of competition law.  Where commercial parties notify an agreement 
to the Commission seeking an exemption under Articl e 81(3) of the EC Treaty, the Commission may 
respond through an informal "comfort letter".  This  letter expresses the opinion of the Commission on 
the interpretation and application of EC compe tition laws.  The letter binds the Commission.  
However, if the agreement is challenged in a natio nal court, the national court is not bound by the 
Commission opinion.  Indeed, according to the ECJ, th e national court is not even obliged to take the 
Commission opinion into account, although it "may" do so. 
12 
 11. In the same vein, in proceedings before the ECJ, the Commission generally submits a brief.  
However, the Commission's brief carries no greater we ight before the ECJ than a brief submitted by a 
private party, or by one of the other Community inst itutions or an EC member State.  In many cases, 
the ECJ does not even accept the Co mmission's interpretation of pr ovisions of Community law. 
 12. Therefore, it follows that the interpreta tion of the EC GI Regulation offered by the 
Commission to the Panel in this dispute (particularly  in light of the fact that this interpretation 
contradicts all previous interpretations provide d by the EC) is not binding upon the European 
Communities.  It is no more than the opinion of the Commission and has no special authority. 
 
13. The significance of this fact for this Panel mi ght be illustrated by an example.  Assume that, 
in applying its interpretation of the GI Regul ation, the Commission grants an application for 
registration of a GI for a product from a WTO Member that has not received approval pursuant to Article 12(3) of the GI Regulation.  The Commission would, by that act, have failed to apply the 
provisions of Articles 12 and 12a, which state that an application can only be entertained from only 
those third countries that have received approval u nder Article 12(3).  In other words, the Commission 
would have registered a GI in circumstances wher e the Council had legislated that no GI should be 
registered.  14. In that case, the Commission's act would be ope n to challenge before the ECJ by any member 
State or by the Council or European Parliament, unde r Article 230 of the EC Treaty.  Further, natural 
or legal persons that are directly and individually concerned by the decision could also challenge the 
Commission's act.  In those proceedings, the Commission's interpretation of the Regulation would not be binding upon the ECJ.  To the contrary, the EC J could reach the view that the Commission was not 
entitled to disregard the requirements in Article 12(1) and 12(3). 
 
15. In that regard, the ECJ has already ruled th at "the WTO agreements are not in principle 
among the rules in the light of which the Court is to review the legality of measures adopted by the 
Community institutions".
13  In other words, the ECJ would not entertain the Commission's argument 
that it was entitled to disregard the terms of the Regulation in order to comply with WTO law.  
Instead, the ECJ will apply EC legislation even  if that legislation is WTO-inconsistent.14  
                                                      
12 Bellamy & Child, European Community Law of Competition (5th edition, Roth), para. 10-028, citing 
Case 99/79 Lancome v. Etos  [1980] ECR 2511. Exhibit US-30. 
13 Case C-93/02 P, Biret International SA v. Council of the European Union , judgment of 30 September 
2003, para. 52.  Exhibit US-31. 
14 See Case C-149/96, Portuguese Republic v. Council of the European Union , judgment of 23 
November 1999, paras. 49 – 52.  Exhibit US-32.  Portugal argued that a Council decision concerning market 
access for textiles from Pakistan was contrary to Commun ity law as it was inconsistent with WTO law.  The 
ECJ declined to examine the WTO law arguments and held that the Council decision could not be challenged 
for these reasons.  The ECJ found that the arguments on WTO law were "unfounded", without any substantive WT/DS174/R/Add.1 
Page A-76  
 
  
16. The only exception to this appears to be wh ere the EC legislation "intended to implement a 
particular obligation assumed in the context of  the WTO agreements, or where the Community 
measure refers expressly to the precise provisions of the WTO agreements".
15  In that event, the ECJ 
will examine whether EC legislation is consistent with the WTO oblig ations it seeks to implement.  
However, even in that case, the ECJ would not allow the Commission simply to disregard provisions 
of a Regulation.  The Commission must apply the legislation.  If the Commission considered that the legislation was WTO-inconsistent it could have ch allenged the Council's adoption of the legislation 
before the ECJ under Article 230 of the EC Treaty.  
17. The Panel should also be aware that, acco rding to Article 211 of the EC Treaty, the 
Commission has a responsibility in EC law for ensu ring that the EC Treaty and secondary legislation 
"are applied".  In that respect, if the Commission takes the view that an EC member State or another institution has failed to respect EC law, the Commission may bring proceedings to the ECJ under 
Articles 226, 230 or 232 of the EC Treaty.  However, the Commission's responsibility under 
Article 211 does not confer any special status upon th e Commission's interpretation of EC law.  The 
other institutions, and the Member States, can and do take different views from the Commission as to the meaning of EC law.  At the end of the day, it is  for the ECJ to ensure th at "the law is observed", 
according to Article 220.  18. For all these reasons, the Panel should not  accord any particular deference to the 
Commission's most recent interpretation of the GI Regulation, newly minted for purposes of this 
dispute, taken alone.  This new interpretation does not  appear to be based on  any published official 
notice; it appears to run counter to the terms of th e Regulation; and does not a ppear to be authoritative 
or binding as a matter of EC law.  Further, as discussed above, the United States has substantial 
concerns that the EC's interpretation would not stand up to ECJ review. 
 
Q2.  Can the procedures under Articles 5 and 6 of Regulation (EC) No. 2081/92 apply to names of 
geographical areas located outside the EC?  EC 
 Q3.  Did the phrase "[w]ithout prejudice to in ternational agreements" in Article 12(1) of 
Regulation (EC) No. 2081/92 predate the TRIPS Ag reement?  Did it refer to any specific agreements 
when it was adopted?  Which agreements does it ref er to now?  Would it cover bilateral agreements 
for the protection of individual geographical indications?  EC 
 Q4.  Is it unusual that the text of Article 12(1) of Regulation (EC) No. 2081/92 covers only a small number of countries that are non-WTO Members, but the introductory phrase "[w]ithout prejudice to 
international agreements" covers th e entire membership of the WTO?   Why was this structure 
retained when the Regulation was amended in April 2003?  EC 
 Q5.  In paragraph 8 of the US oral statement it is  implied that the purpose of the phrase "[w]ithout 
prejudice to international agreements" in Article 12(1) of Regulation (EC) No. 2081/92 is to reserve 
the EC's flexibility to protect specific non-EC GIs through bilateral agreements.  In the US view, in 
what way does the phrase apply to bilateral agreements ?  Please also explain on what basis the US  
draws the distinction between bilatera l and other international agreements.  USA  
 
                                                                                                                                                                    
 
inquiry.  In essence, the ECJ ha s already accepted, therefore, that  Council legislation may well be 
WTO-inconsistent and must still be applied in the EC legal order. 
15 Biret International SA , para. 53.  Exhibit US-31.  WT/DS174/R/Add.1 
 Page A-77 
 
 
 Response:  
 
19. The  "without prejudice" language recognizes th at international agreements may lay down 
specific GI rules ( i.e., either directly specifying GI protection for specific names or specifying 
procedures and requirements for protecting GIs from the pa rties to that agreement).  In such an event, 
the specific regime established in the interna tional agreement will be applied directly.   
 20. As context and by way of background, the EC has sought and granted protection to specific geographical indications in bilateral agreements with individual countries.  Such provisions are 
contained, for instance, in the EC's agreement in  the wine sector with Canada, Chile, and South 
Africa, among others, in which EC-wide GI protecti on is granted to specific GI terms listed in those 
agreements under specific procedures.
16  And, indeed, the basic EC wine regulation, Council 
Regulation (EC ) 1493/1999, provides that imported wines bearing a geographical indication may be eligible for the EC's protection and control scheme for geographical indications "subject to 
reciprocity".
17  Further, the EC's wine labeling regula tion, containing rules for applying Regulation 
1493, makes the use of GIs for wine from third countri es subject to a requirement that they not give 
rise to confusion with the geographical indication of  "another imported wine included in the lists in 
agreements concluded between the Community and third countries." 18  
 21. In other words, in this area, the EC provides certain general rules for the use of GIs from third 
countries, but makes those rules subject to specific agreements that the EC has reached with certain 
third countries with respect to protection of specific GIs.   
 22. Similarly, in the non-wine context, the Join t Declaration included in the bilateral agreement 
between Switzerland and the EC "on the protection of geographical indications and designation or 
origin of agricultural products and foodstuffs" specifically anticipates speci al rules concerning both 
the registration of Swiss GIs and the inspection structures to be required of Switzerland:   
 
[t]he Parties shall provide for provision on the mutual protection of PDOs and PGIs to be incorporated in the Agreement on trad e in agricultural products on the basis of 
equivalent legislation, as regards both th e conditions governing the registration of 
PDOs and PGIs and the a rrangement on controls.   
 
23. Thus, to provide for the likelihood th at these "conditions governing [PDO and PGI] 
registration" and the "arrangement on controls" w ill not necessarily mimic exac tly the conditions and 
inspection structures required in the EC GI Regulat ion, the GI Regulation states that the conditions 
and inspection structures required of third countries in the GI Regulation are "[w]ithout prejudice to 
international agreements", such as th at negotiated with Switzerland.   
 
                                                     
 
16  See, e.g.,  Agreement between Canada and the European Community on Trade in Wines and Spirit 
Drinks, Articles 10 and 11 ("In implementation of paragraphs 1 and 2, after receiving an official application by diplomatic note from Canada justifying that the names in paragraph 1 are geographical indications, the 
Community shall take the necessary steps to have the names listed in Annex III (b) protected by the competent 
authorities responsible for enforcement so that any wine s incorrectly presented or described with a protected 
Canadian geographical indica tion are not placed on, or are withdrawn from, the market").   Exhibit US-33.   See 
also Agreement Between the European Co mmunity and the Republic of South Africa on Trade in Wine,  
http://europa.eu.int/eur-lex/pri/en/oj/dat/2002/l_028/l_02820020130en00040105.pdf ; 
17 Council Regulation (EC) No. 1493/1999 of 17 May 1999, OJ L 179, 14.7.1999, page 1, Annex VII 
(G)(4).  Exhibit US-34. 
18 Article 36(3) of Commission Regulation (EC) No. 753/2002 of 29 April 2002, laying down certain 
rules for applying Council Regulation (EC) No. 1493 as regards the description, designation, presentation and 
protection of certain wine sector products, OJ L 118, 4.5.2002, p. 1.  Exhibit US-35. WT/DS174/R/Add.1 
Page A-78  
 
 24. There are other examples of bilateral agreem ents to which the "without prejudice" language 
would appear to apply.  For instance, there are b ilateral agreements for the protection of specific GIs 
between member States of the EC and third coun tries, such as those between Austria and the 
Czechoslovak Republic and between Portugal and the Czechoslovak Republic on the protection of 
specific Czech GIs.
19  As the Supreme Court of Justice in Portugal noted in a case involving the latter 
agreement, the language of the GI Regulation – "[w] ithout prejudice to international agreements" – is 
aimed at excluding from "its field of application th e third countries which are parties in agreements 
entered into with member States."20  There are other bilateral and plurilateral agreements involving 
member States on GIs.  Examples are provided in WTO document, IP/C/W/85/Add.1, 2 July 1999, 
Overview of Existing International Notifica tion and Registration Systems for Geographical 
Indications Relating to Products Other Than Win es and Spirits, (Note by the Secretariat).  As 
discussed above, certain of these agreements provide GI protection for specific names (examples include the Austria / Czechoslovak agreement that pr otects a list of named GIs) and the (plurilateral) 
Stresa Convention,
21 which protects a large number of names of cheeses. 
 
25. In addition, the EC is also seeking more  specific agreements on GIs.  For instance, 
Article 46(4) of the Cotonou Agreement states that  the EC, its member St ates and the ACP countries 
may enter into agreements on the protection of "ge ographical indications for products of particular 
interest" to the parties.  The EC is also engaged in negotiations with China on a bilateral agreement on 
GIs.  (see http://europa.eu.int/comm/exte rnal_relations/china/intro/sect.htm). 
 
26. In the context of all of these specific b ilateral and plurilateral agreements, the "without 
prejudice" language allows the Commi ssion to apply the specific GI protection regimes established by 
international agreements independe ntly of the Regulation.  For instance, if the EC concludes an 
agreement with a third country to provide GI pr otection for named agricultural products from that 
country, there is no need to use the registration procedures in the Regulation.  The Commission can 
simply insert the names concerned in the register on the basis of the newly established international 
regime and the "without prejudice" language in the GI Regulation. 
 27. Similarly, if an international agreement were to lay down special procedures governing the 
registration of GIs for products from particular th ird countries, the Regulation would not prevent the 
Commission from applying these procedures directly, even though they are different from the 
procedures in the Regulation.  
 28. In these cases, the international agreement would be applied directly without need for 
implementing rules.  In short, instead of applying the Regulation, the Commission would apply specific rules laid down in the agreement that deal  with the particular fact situation.  And the 
Commission would derive authority for its act dire ctly from the international regime to which it 
specifically applies, displacing the general rules in the EC GI Regulation.  29. In the case of the national treatment obligati on in the TRIPS Agreement, by contrast, there is 
no specific international registration regime for the Commission to apply.  The Commission does not 
even purport to be applying an international regi me of any kind.  Instead, the Commission appears to 
                                                     
 
19 See Case C-216/01, Budejovicky Budvar v. Rudolf Ammersin , judgment of 18 November 2003, paras. 
70 and 71 (where the French government asserted that the "without prejudice" language preserved the 
protections offered by the Austrian-Czechoslovak Agreement; the ECJ did not have to address that assertion, 
however, since the case was decided on other grounds) .  At the time of the dispute, the Czech Republic, a 
successor State to the Czechoslovak Republic, was not a member State of the Eu ropean Union and was, 
therefore, a third country for these purposes.  Exhibit US-36. 
20 Exhibit US-37.   
21 Signed on 1 June 1951 and entered into force on 12 July 1953. To date the contracting parties are 
Austria, Denmark, France, Italy, The Netherlands, Norway  and Switzerland.  WT/DS174/R/Add.1 
 Page A-79 
 
 
 acknowledge that it is applying the Community regist ration regime.  However, apparently because of 
the requirements of the national treatment obliga tion in the TRIPS Agreement, the Commission now 
says it has to apply the Community regime di fferently from the regime the Council adopted. 
 30. The Commission is, therefore, purporting to appl y a regime that is not provided for either in 
an international agreement or in Community law.   In short, there are no specific rules in an 
international agreement to apply; instead, the Comm ission now purports to be taking it upon itself to 
modify the Community general rules.  31. But the "without prejudice" language does not authorize the Commission to apply rules that 
have no legal basis whatsoever, be it in internationa l law or Community law.  Furthermore, in general 
Community law, as the United States understands  it, the Commission does not enjoy the legal 
authority to modify or refuse to apply a Council Regulation.  Only the Council can modify its own Regulation.   
32. Accordingly, the Commission appears to have no legal authority to receive GI applications 
for products from a third country unless the third c ountry has requested, and been granted, approval 
by the Commission, pursuant to Article 12(3) of the Regulation.  33. With respect to the Panel's question a bout whether these agreements are necessarily 
"bilateral", the EC has generally sought reciprocal  treatment, which implies that in general such 
agreements are bilateral.  But the United States notes that the EC is also negotiating agreements in the 
wine sector with Mercosur, whic h would probably be characterized as plurilateral, and also notes the 
example of the Stresa Convention, discussed above, wh ich is also plurilateral.  It is, of course, 
possible for a multilateral agreement to provide for specific procedures and conditions for registering 
and protecting certain GIs of all parties to the agre ement, as the EC has negotiated on a bilateral basis 
and plurilateral basis in the past.  But, for the reasons mentioned above, the WTO Agreement is not 
such an agreement.   
Q6.  What meaning does Australia give to the phrase "[w]ithout prejudi ce to international 
agreements" in Article 12(1) of Regulation (EC) No. 2081/92?  AUS  
 
Q7.  Do the last sentence of Article 12(3) of Regulation (EC) No. 2081/92 and the first clause in 
Article 12a "[i]n the case provided for in Artic le 12(3)" limit the applic ability of Article 12a?  EC 
 Q8.  Which references to a "third country" in Articles 12, 12a, 12b and 12d of Regulation (EC) No. 2081/92 include all WTO Members, and which do not ?  What, in the context of each reference, 
indicates what "third country" means ?  Why are different terms not used?  EC 
 Q9.  Why is it that only the rights of objection in Articles 12b(2)(a) and 12d(1) of Regulation (EC) No. 2081/92 mention a "WTO Member" or "WTO me mber country"?  Is it relevant that Regulation 
(EC) No. 692/2003 explained, in its 10th recital, that  in the matter of objections the provisions in 
question apply without prejudice to international agr eements but, in its 9th recital, it explained that 
the protection provided by registration is open to third countries' names by reciprocity and under 
equivalence conditions?  EC 
 Q10.  Has the Commission recognized any countries und er the procedure set out in Article 12(3) of 
Regulation (EC) No. 2081/92?  Have any countries requ ested to be recognized under that procedure?  
EC 
 Q11.  Has an application for registration under Regulation (EC) No. 2081/92 ever been made in 
respect of the name of a geographical area locate d outside the EC?  If so, what happened?  EC 
 WT/DS174/R/Add.1 
Page A-80  
 
 Q12.   Has any group or a natural or legal p erson interested in a geographical indication for 
agricultural products or foodstuffs or iginating in your territory ever se nt a registration application to 
your authorities pursuant to Regulation (EC) No. 2081/92?  If not, do you know the reason?  USA, 
AUS  
 
Response:  
 
34. As the United States explained to the Pane l during its first meeting, there is no office 
established within the US Government for processing a pplications for GI registrations in the EC; nor 
is the United States in a position to assess whether a ny such application would meet the requirements 
of the EC GI Regulation, as that regulation requires.
22  Therefore it is not clear to whom such an 
application would be sent.    35. However, after consulting various agencies in the US Government, it does not appear that any 
applications have been submitted, although ther e have been discussions with private sector 
stakeholders about the lack of access to the EC GI system.  The United States is not privy to all of the 
reasons that a person with a US-based GI would not fi le an application.  However, as illustrated by the 
case of the Idaho Potato Commission, which protects "Idaho Potatoes" as a certification mark in the 
United States, such rightholders recognize that it wo uld be futile to apply, because the United States 
does not satisfy the GI Regulation's equiva lence and reciprocity requirements.   
 
36. In testimony presented to the Committee on Agri culture in the US House of Representatives 
on July 22, 2003, a representative of the Idaho Pota to Commission testified that, in order to achieve 
GI protection under the GI Regulation, the country se eking GI protection for its nationals has to show 
that it "has essentially adopted the EU system for prot ecting GI's.  This puts the EU in the position of 
evaluating the laws of another WTO Member, and then making a determination that their system for 
protecting GI's is reciprocal to the laws of the EU."
23  Testifying that "the existing US certification 
mark system is not, in the view of the EU, suffi cient", he concluded that there was no way for US 
agricultural producers to achieve such protection.  He further stated that "the attorneys we have 
retained in the EU to investigate and advise us of any recourse that might be available to us have all 
reached the same conclusions: the EU system has simply shut us out.  We are powerless to protect our name in the EU, but EU nationals are free to register and use our name."
24   
 
37. As far as the United States is aware, the s ituation of the Idaho Potato Commission is not 
unique, and its view of the situation, which has been set out in public statements, is shared by many 
relevant stakeholders in the United States.  For instance the US Dairy Export Council and the National 
Milk Producers Federation have also complained to  the US Government that, absent EC-equivalent 
legislation in the United States, US persons are not eligible to register their GIs in the EU.25  
 38. Further, neither the Idaho Potato Commiss ion nor any other US stakeholder would have 
received contrary information from the US Government .  To the contrary, as discussed in the US first 
written submission, the EC has made clear on numer ous occasions, including during five years of 
consultations, that the United States would have  to satisfy the conditions of reciprocity and 
equivalence to have US-based GIs registered, a nd that the United States does not satisfy those 
conditions.  Indeed, responding on January 16, 20 03, to the US concern about conditioning the 
availability of  GI registration on equivalence and reciprocity,  the EC specifically wrote that "it is true 
                                                     
 
22 Article 12a(2) of the GI Regulation. 
23 See Exhibit US-38, at p. 352. 
24 Exhibit US-38 at p. 353. 
25 See Letter from US Dairy Export Council and the National Milk Producers Federation to the Office 
of the United States Trade Representative, dated March 26, 2004.  Exhibit US-39.  WT/DS174/R/Add.1 
 Page A-81 
 
 
 that US GIs cannot be registered in the EU" , but claimed that other avenues for protection ( e.g., 
member State unfair competition rules) were available.26  
 39. In other words, the lack of applications appears to result from the success of the EC GI 
Regulation in erecting barriers to those applications.  
 
Q13.  What discretion does the Commission enjoy in the application of Regulation (EC) 
No. 2081/92?  EC 
 Q14.   Please express your view on whether and to what extent the mandatory/discretionary 
distinction in GATT and WTO jurisprudence appli es under the TRIPS Agreement.  Would the nature 
of those TRIPS obligations wh ich are not prohibitions but rather oblige Members to take certain 
actions, affect the application of the distinction?  USA, AUS, EC  
 
Response:  
 
40. In this dispute, the EC has argue d, at para. 12 of its oral statement
27  
 
In order to substantiate their claim, th e complainants should have established that 
Regulation 2081/92 mandates necessarily the registration of later confusing 
geographical indications. In turn, this w ould have required them to show that 
Article 14(3) cannot be interpreted in a ma nner which allows the registering authority 
to refuse the registration of confusing geogra phical indications. At the very least, the 
complainants should have established that , in practice, Article 14(3) is being 
interpreted and applied in a manner whic h results in a consistent pattern of 
registrations of confusing geographical i ndications. The complainants have proved 
none of this. Indeed, they have not even attempted to do so. As mentioned, their 
complaint is purely theoretical. The Panel, therefore, should conclude that, as a matter of fact, the complainants' claim would be  unfounded even on their own interpretation 
of Article 16.1 of the TRIPS Agreement. 
41. This is not a proper application of the mandato ry/discretionary analysis.  Article 16.1 of the 
TRIPS Agreement requires Members to provide owne rs of registered trademarks with certain 
exclusive rights to prevent confusing uses of signs, including GIs.  A WTO Member cannot decline to 
provide this right, guaranteed by the TRIPS Agreement, on the grounds that the owner  of the 
registered trademark is unlikely to need it in light of how the EC might apply Article 14(3).  Yet, that 
is just what the EC is arguing.  Further, Article 14( 3) cannot substitute entirely for this right.  First, 
Article 14(3) applies only in the case of possible conf usion with trademarks "in light of a trade mark's 
reputation and renown and the length of time it has b een used".  By contrast, Article 16.1 rights are 
required regardless of the reputation,  renown, or length of time of use of the registered trademark.  
More significant, however, Article 14(3) cannot substitute entirely for TRIPS Article 16.1 rights 
because it is not possible to determine with certainty at the time of registration whether the use of a GI 
will likely result in confusion with a registered tr ademark, as such a determination is made on a case-
by-case basis, and may require an evaluation of  the use of the GI in the marketplace.   
 
42. Simply stated, the EC cannot provide the requi red exclusive rights to owners of registered 
trademarks under TRIPS Article 16.1 by invoking the unrealistic hope that the EC authorities will 
make the exercise of those rights unnecessary through th e use of Article 14(3) of the GI Regulation.  
The EC is incorrect in stating that to establish its  TRIPS Article 16.1 claim, the United States "would 
need to prove that Regulation 2081/92 mandates ne cessarily the registration of confusing geographic 
                                                     
 
26 See Exhibit US-40.   
27 See also , EC First Written Submission, paras. 277 and 292. WT/DS174/R/Add.1 
Page A-82  
 
 indications."
28  The issue is not whether the EC has the legal discretion to grant or deny the 
registration of GIs when there is the possibility of confusion with any trademark (although the EC 
does not have such discretion.).  The issue is whether the EC is providing owners  of registered 
trademarks with the rights required by Article 16.1.    
43. Thus, in the context of this dispute, a breach  has been established through the failure of the 
EC to provide the right in question in its municipal law.  The mandatory/discretionary analysis is not required in this particular instance.  This is not to  say, however, that it might not be relevant in other 
TRIPS Agreement contexts, including where the TR IPS Agreement obliges Members to take certain 
actions.  For example, if a Member maintains a measure which affirmatively precludes the Member's 
authorities from taking required actions, under a mandato ry/discretionary analysis, the measure would 
mandate a breach of the TRIPS Agreement obligation.   44. Finally, the EC has no basis for alleging that  a challenge to the EC GI Regulation requires a 
showing of a "consistent pattern" of registering confusing GIs.  As described above, the EC is 
obligated to provide a right in its municipal law, and it is not.  Nevertheless, the United States notes 
that in the one invocation of Article 14(3) cited by the EC, the Commission decided to register the name Bayerisches Bier as a GI, notwithstanding ha ving been informed of a trademark ("Bavaria") 
used for beer that included that name (apparently in translation).
29  This specific application of the 
Regulation does not give the United States much conf idence that Article 14(3) fulfills the Article 16.1 
rights of registered trademark owners. 
 
Q15.   What would be the most authoritative statement of the interpretation of Regulation (EC) No. 
2081/92?  Is a statement by the EC delegation to  this Panel legally binding on the European 
Communities?  EC 
 
Response:  
 
See response to question 1.  
 
Q16.   Can the EC provide the Panel with any  official statement predating its first written 
submission that names of geographical areas locate d in all WTO Members could be registered under 
Regulation (EC) No. 2081/92 without satisfying its equivalence and reciprocity conditions?  EC 
 Response:  
 
45. See Exhibit US-40, in which, in a communication to the United States, the EC confirmed that 
US GIs "cannot be registered in the EU."  See also  Exhibit US-44 (slide 14/15).   
 
Q17.  Is the EC's explanation of the availability of registration of foreign GIs under its system, set 
out in its written statement to the Council for TRIPS  in September 2002, (IP/C/M/37/Add.1, para. 142 
and Annex, pp. 77-85) consistent with the text of Articles 12-12c of the Regulation?  Why did that written statement not qualify the position that the Regulation's equivalence and reciprocity conditions 
apply to foreign GIs, if they did not apply to WTO Members, to whom the statement was addressed?  
EC 
 Q18.  Did the EC member States agree with the Commission's written statement to the Council for 
TRIPS in September 2002 with respect to the conditions  attached to the registration of foreign GIs?  
How can the Commission ensure that the Council of Ministers will not prevent registration under the 
                                                     
 
28 EC First Written Submission, para. 277. 
29 See Exhibit US-41.  WT/DS174/R/Add.1 
 Page A-83 
 
 
 Regulation of the name of a geographical area  loca ted in a third country WTO Member because that 
Member does not satisfy the equivalence and reciprocity conditions of Article 12(1)?  EC 
 Q19.  Has a judicial authority ever ruled on the ava ilability of protection provided by registration 
for third countries under Regulation (EC) No. 2081/92?  If the Commission registered the name of a 
geographical area located in a third country WTO Me mber, could that registration be subject to 
judicial review because the area was located in a WTO Member that did not fulfil the equivalence and 
reciprocity conditions of Article  12(1) of the Regulation?  EC 
 Q20.  With reference to paragraph 43 of the EC's oral statement, does the EC contest that 
equivalence and reciprocity conditions such as tho se 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 Agreement and/o r Article III:4 of the GATT 1994?  EC 
 Q21.  If Switzerland, as a WTO Member, can apply for registration of its GIs under Regulation 
(EC) No. 2081/92 without satisfying equivalence and reciprocity conditions, what was the purpose of 
its joint declaration with the EC concerning GIs set out in Exhibit US-6 and mentioned in paragraph 
119 of the US first written submission and paragrap hs 243-244 of the EC's first written submission?  
USA, AUS, EC  
 
Response:  
 
46. While the United States cannot speak for Switzer land, in the view of the United States, if 
there were no requirement for equivalence and reciprocity in the GI Regulation, as the EC maintains, 
it would make little sense for Switzerland to agree to  "mutual protection" of GIs "on the basis of 
equivalent legislation".  In effe ct, Switzerland would be agreeing to  more onerous requirements than 
would be required under the GI Regulation.  By co ntrast, such an agreement would be useful if it 
meant that Switzerland did not have to meet the eq uivalence and reciprocity requirements in the GI 
Regulation.    
Q22.  Are there any legal requirements or other pr ovisions in EC or national laws which ensure 
that groups or persons entitled to apply for regis tration under Article 5 of Regulation (EC) No. 
2081/92 are always, or usually, EC citizens or legal persons organized under the laws of the EC or an 
EC member State?  What conditions have been laid down for natural or legal persons to be entitled to 
apply for registration pursuant to Article 5(1)?  USA, AUS, EC  
 
Response:  
 
47. Under Article 5 of the GI Regulation, onl y an association of producers and/or processors 
working with the same agricultural product or foods tuff may apply for a GI registration; Article 2 of 
Commission Regulation (EEC) No 2037/93 of 17 July 1993
30 permits applications by a group of 
individuals without legal personality  where national law treats such a group as a legal person.  Under 
Article 5.2, "[a] group or a natural or a legal pe rson may apply for registration only in respect to 
agricultural products or foodstuffs wh ich it produces or obtains" within a particular region.  Therefore, 
with respect to applications for GIs referring to regi ons within the EC, it would appear to follow that 
those entitled to submit an application for EC-based  GIs include legal persons under member State 
national law that produce or process products in a par ticular region of that member State; in other 
words, such applicants are, generally legal persons under the laws of the EC or the EC member State.  
Indeed, as a practical matter, any commercial en tity growing agricultural products or processing 
                                                      
30 Laying down detailed rules of application of Council Regulation (EEC) no 2081/92 on the protection 
of geographical indications and designations of origin for agricultural products and foodstuffs, OJ L 185, 
28.7.1993, p. 5 (Exhibit COMP-2.a). WT/DS174/R/Add.1 
Page A-84  
 
 foodstuffs in a member State of the EC will set up a legal entity under the laws of that member State 
for that purpose.    48. Of course, Article 12a, provides for applicati ons from "a group or a natural or legal person as 
referred to in Article 5(1) and 5(2) in a third c ountry" that satisfies the equivalence and reciprocity 
conditions, so the same considerations apply w ith respect to applicants from qualifying third 
countries: "legal persons" in such a third country pr oducing or obtaining product in that third country 
may also be able to submit an application for their GIs.  
Q23.  How do you interpret the term "nationals" as used in Article 1.3, including footnote 1, and 
Articles 3.1 and 4 of the TRIPS Agreement and Article 2 of the Paris Convention (1967) in relation to 
this dispute?  Do a Member's nationals necessarily  include natural persons  who are domiciled, or 
legal persons who have a real and effective indus trial and commercial establishment, in that 
Member?  USA, AUS, EC  
 
Response:  
 
49. Article 1.3, footnote 1, specifies that "nationa ls" of a WTO Member that is a separate customs 
territory, such as the EC, means "persons, natural or legal, who are domiciled or who have a real and 
effective industrial or commercial establishment in th at customs territory."  This is a definition that 
applies to the TRIPS Agreement as a whole, so it is a definition that also applies to Articles 3.1 and 4 
of the TRIPS Agreement.  Thus, for instance, under Article 3.1, the EC has an obligation to accord 
nationals of other Members treatment no less favorab le than it accords natural or legal persons who 
have a real and effective industria l or commercial establishment in th e EC.  Further, under Article 2 of 
the Paris Convention, "nationals" refe rs to both natural and legal persons,
31 and, under Article 3, 
persons that are not nationals of a Paris Union memb er country, but that are domiciled or that have a 
real and effective industrial or commercial establis hment in the territory of one of the member 
countries, are also treated as nationals of that member country.  
Q24.  In your view, which natural or legal p ersons can be considered "interested parties" in the 
sense of Article 22.2 of the TRIPS Agreement?  Is  Article 10(2) of the Paris Convention (1967) 
relevant?  USA, AUS, EC  
 
Response:  
 
50. "Interested parties" is not defined in the TR IPS Agreement, but the ordinary meaning of the 
term under TRIPS Article 2.2 would in clude a party that has an interest in the subject matter of the 
geographical indication.  Article 10(2) of the Paris Convention, which concerns  similar subject matter 
to TRIPS Agreement Article 22 of the TRIPS Agreem ent (including false indications of geographical 
source), provides useful context that an "interested party" includes producers or sellers of the relevant 
goods that are either established and producing in the region falsely indicated as the source, or 
established and producing in the country where the fa lse indication of source is used.  Article 10 is 
relevant in this respect notably because it is one  of the Paris Convention provisions specifically 
incorporated into the TRIPS Agreement by Article 2.1.
32 
 
Q25.  Is it appropriate to compare nationals who are interested in GIs that refer to areas located in 
different WTO Members in order to  examine national treatment under the TRIPS Agreement?  Why or 
why not?  USA, AUS, EC  
 
                                                      
31 Bodenhausen, p. 27.  Exhibit US-2. 
32 See Gervais, page 193 (The definition of interested party in Article 10(2) "is useful and may be used 
to interpret the expression "interested party" used in Article 22(2)).  Exhibit US-42.    WT/DS174/R/Add.1 
 Page A-85 
 
 
 Response:  
 
51. GIs are by nature related to geographic territo ry.  An analysis of national treatment requires 
comparing the treatment of different nationals with  respect to the protection of their intellectual 
property.  Therefore it is appropriate to compare th e treatment of domestic nationals with respect to 
the protection of their home-based GIs to the trea tment of foreign nationals with respect to the 
protection of their home-based GIs.  In addition,  as a practical matter, and particularly in the 
agricultural sector, which is intrinsically tied to the land, a measure that provides less favorable 
treatment to products originating in certain WTO Me mbers also provides less favorable treatment to 
the nationals of that Member.   
 
Q26.  If national treatment can be examined in relation to GIs in terms of the location of the 
geographical area to the territory of a Member, is  it appropriate to examine national treatment in 
relation to any other intellectual property rights in terms of an attachment to a Member besides the 
nationality of the right holder?  Why or why not?  USA, AUS, EC  
 
Response:  
 
52. National treatment obligations should be  analyzed on a case-by-case basis, based on the 
measure at issue, as well as on the particular type of intellectual property right; broad conclusions in 
the absence of a particular issue are difficult to fo rmulate accurately.  However, the United States 
notes that footnote 1 to Article 1.3 of the TRIPS Agreement defines "national" throughout the 
Agreement not in terms of nationality, but in term s of where a person is domiciled or where a person 
has a real and effective industrial or  commercial establishment.  Further,  in Article 1.3, "nationals" of 
other Members include persons meeting certain cr iteria for protection under other international 
agreements.  In the case of copyri ght, as an example, non-nationals that  would be treated as nationals 
for purposes of protection under the Berne Conventio n would include non-nationals whose works are 
first published in a member country (Berne Conve ntion, Article 3), or persons with "habitual 
residences"  in such a country.  Similarly, under the Rome Convention, there are points of attachment that are broader than mere nationality, includi ng where a phonogram was first fixed, or where a 
performance took place, or where a broadcast originated.   
53. Geographical indications may be different fro m other forms of intellectual property in the 
degree to which they are related to the territories of the Parties, but finding points of attachment that 
go beyond mere "nationality" in a technical sense is not unusual.    
Q27.  Can the Panel assume that it is likel y that interested parties in relation to names of 
geographical areas located in a Member are nationa ls of that Member?  Have the complainants 
attempted to gather data on the relative numbers of  EC, and non-EC, interested parties in names of 
geographical areas located within, and outside, the EC  that might be eligible for registration under 
Regulation (EC) No. 2081/92?  Would such data be relevant?  USA, AUS  
 
Response:  
 
54. Any meaningful and realistic appraisal of whether a measure provides less favorable 
treatment to nationals with respect to geographical indications would take into account that nationals 
have an interest in GIs in the country of their na tionality, particularly with respect to agricultural 
products and foodstuffs.  Therefore, a measure that provides less favorable treatment of, for instance, 
agricultural products from the United States would provide less favorable treatment to the US 
nationals that produce them.    55. Further, since the EC's requirements have discouraged anyone from applying for GI registration with respect to GIs in the United States, it is not possible to determine whether, for WT/DS174/R/Add.1 
Page A-86  
 
 instance, there are any French nationals who woul d, in the absence of the barriers in the EC GI 
Regulation, seek to register a US-based GI in the EC.   56. In addition, as further support for this obvi ous link, the United States conducted a search for 
certification mark applications by French, German, Spanish and Italian nationals.  As the Panel is 
aware, the United States protects geographical indications through certification marks (although 
certification marks can include subject matter that goes beyond "geographical indications" as defined in the TRIPS Agreement or the EC GI Regulation).  The results are attached as Exhibit US-43, and 
show that nationals of a country typically regist er names that refer to geographical areas from the 
territory of their nationality.  For example, the cer tification mark applications and registrations from 
French nationals include names of French geographi c origin, and not names of US origin.  The same 
is true of applications from Germ an, Italian, and Spanish nationals.  Similarly, Exhibit 43 includes a 
sample search of US entities with registered cer tification marks referring to selected food products, 
which shows that those entities ar e interested in geographical ar eas in the United States.   
 
57. However, in the view of the United States, such data, while they might be obvious, are not 
necessary, because of the obvious lin k between the natural and lega l persons who would seek GI 
protection for agricultural products and foodstuffs and the territory of the Member in which they are 
growing or producing such products.   
Q28.  Do you have information on the numbers of EC nationals  who are interested parties in 
relation to GIs protected in your territory for agr icultural products and foodstuffs other than wines 
and spirits?  USA, AUS  
 Response:  
 58. The information with respect to certification marks filed by various EC nationals, described in 
response to question 27, would suggest that EC nationa ls have an interest primarily in GIs referring to 
regions in their country of nationality.  In additio n, however, interested parties would also include 
those who are likely to be damaged by the registration of a GI – e.g., an EC national using a generic 
term on a product exported to the United States, where there is an application at the USPTO to make that term proprietary.  The United States has no way to know the number of EC nationals who are 
interested parties in this sense, but notes that a ny such parties are free to object to, or request 
cancellation of, the registration of a certification mark.   
Q29.  The Japan – Alcoholic Beverages II, Korea  – Alcoholic Beverages and Chile – Alcoholic 
Beverages disputes show that measures which are or igin-neutral on their face can be inconsistent 
with Article III of GATT 1994.  Is Regulation (E C) No. 2081/92 also open to challenge under 
Article 3.1 of the TRIPS Agreement despite  its apparently national-neutral text?  EC 
 Q30.  In Article 2(1) of the Paris Convention ( 1967) as incorporated in the TRIPS Agreement by its 
Article 2.1, should the words "country of the Uni on" be read mutatis mutandis to refer to "WTO 
Member"?   USA, AUS, EC  
 
Response:   
 
59. Article 2.1 of the TRIPS Agreement requires WTO Members to "comply" with, inter alia , 
Article 2(1) of the Paris Convention, which impos es obligations with respect to the treatment of 
"[n]ationals of any country of the Union."  Th erefore, "country of the Union" should be read mutatis 
mutandis  to refer to "WTO Member".  The United States notes, however, that it is a WTO Member as 
well as a "country of the Union," so that its na tionals are owed national treatment by the EC 
regardless of the interpretation of this phrase.    WT/DS174/R/Add.1 
 Page A-87 
 
 
 Q31.   What is the respective scope of the national treatment obligations in Article 2(1) of the Paris 
Convention (1967) and Article 3.1 of the TRIPS Agreement?  Do they overlap?  USA, AUS, EC  
 
Response:  
 60. The national treatment obligations of the Paris Convention apply with respect to the 
protection of industrial property as defined in the Paris Convention.  Those of the TRIPS Agreement 
apply to the protection of intellectual property as  defined in the TRIPS Agreement.  There is 
substantial overlap in these protections, bu t they are not entirely co-extensive.   
 
61. With respect to the national treatment obligation itself, the scope of the obligation is slightly 
different in the Paris Convention compared to th e TRIPS Agreement – notably, the Paris Convention 
requires that the "same protection" be granted to nationals of other Members as is granted to a 
Member's own nationals, whereas the TRIPS Agre ement requires "no less favourable" treatment.  
However, the United States does not believe that this  difference in scope is relevant for purposes of 
this dispute, as the treatment provided by the EC is neither the "same" nor "no less favorable."  
Similarly, the United States does not believe that the difference between other nationals enjoying the 
advantages of one's own nationals (Paris Convention Article 2(1)) a nd other nationals being accorded 
treatment "no less favourable" than that accorded on e's own nationals (TRIPS Agreement Article 3.1) 
is significant in this dispute, since the EC GI  Regulation complies with neither standard.   
 Q32.  If Regulation (EC) No. 2081/92 grants diff erent treatment to names, why does this amount to 
less favourable treatment to like products?  What  evidence is there of actual modification of 
conditions of competition?  Would such evidence be  relevant to a determination of less favourable 
treatment?  USA, AUS  
 
Response:   
 
62. Through the registration and protection of GI s for certain products, the GI Regulation bestows 
numerous significant competitive advantages on tho se products, which are detailed in the GI 
Regulation itself.
33  But access to this system of GI protecti on is not available to products of non-EC 
origin on as favorable a basis.  The issue is not granting different treatment to "names" as such, but 
rather granting favorable treatment for products whose names qualify for a particular status that brings 
with it competitive advantages.  The EC itself in its  GI Regulation indicates that products that benefit 
from GI protection show enhanced profitability; indeed , that is the very reason for the Regulation.  In 
addition, the EC has provided specific evidence of this competitive advantage, in presentations aimed 
at demonstrating the value of its GI registration system.34   
 
63. With respect to the issue of "like product",  both the Appellate Body and panels have been 
clear that, where there is a measure of general application ( i.e., not directly regulating specific 
products), the relevant "like produc t" consideration is not whether particular traded products are 
"like", but rather whether the measure at issue ma kes distinctions between products based solely on 
                                                      
33 See US First Written Submission at paras. 104-107. 
34 E.g., "Geographical Indications: An Opportunity for Japanese Specialty Products", Tokyo – Osaka, 
10-12 March 2004 (showing pricing differentials for GI vs comparable non-GI products).  Exhibit US-44. WT/DS174/R/Add.1 
Page A-88  
 
 origin.
35  As the Appellate Body has noted, the term "like product" in Article III:4 of the GATT 1994 
"is concerned with competitive rela tionships between and among products."36  The issue is whether  
 
any formal differentiation in treatment between an imported and a domestic product 
could be based upon the fact that the products are different – i.e., not like – rather 
than on the origin of the products involved.37 
64. In the case of the GI Regulation, the only difference between the pr oducts that may benefit 
from GI registration and protection – products from th e EC –  and those that may not so benefit on 
similarly favorable terms – products from other WT O Members – is their origin.  Consequently, the 
EC agricultural products and foodstuffs that are elig ible for GI registration under one set of criteria 
and the non-EC agricultural products and foodstuffs that are eligible onl y if they satisfy an additional 
set of criteria are like products for purposes of Article III:4.  65. The EC GI Regulation itself offers evidence that both the intent and the effect of the 
Regulation is to provide competitive benefits  on qualifying products.  Further, however, the 
Regulation, on its face, provides for a lack of equality of competitive conditions between domestic 
products, on the one hand, and imported products  on the other, by providing for numerous 
competitive advantages on qualifying products and by im posing barriers to access to those advantages 
on imported products.  Panels in pr evious disputes, in analyzing "less favourable treatment", have 
examined the lack of equality of competitive cond itions provided in the measure itself, without 
reliance on an actual demonstrated impact in the marketplace.  E.g., US – Section 337
38; US – 
Gasoline39.  Therefore, evidence of an "actual" modification of competitive conditions in the 
marketplace is not required.  Indeed, the Appellate Body in US – FSC (Article 21.5)  stated that   
 
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 si mple 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 ."
40 
Q33.  Is there a public policy requirement specific  to GIs which underlies the requirement that a 
group or person must send a registr ation application under Regulati on (EC) No. 2081/92 to the EC 
Member State or authorities of a third country in which the geographical area is located, rather than directly to the Commission?  EC 
 
                                                     
 
35 See Panel Report, US –  FSC (Article 21.5 – EC) , paras. 8.133 (Finding it unnecessary "to 
demonstrate the existence of actually tr aded like products in order to establish a violation of Article III:4" when 
a measure  makes distinctions "between imported and domestic products" that are "solely and explicitly based 
on origin.")  See also  Panel Report, India – Autos , para 7.174 (when origin is "the sole criterion distinguishing 
the products, it is correct to treat such products as  like products within the meaning of Article III:4.")   
36 Appellate Body Report, EC – Asbestos , para. 103.  See also discussion of Alcohol  disputes in 
section IV.A.1.b.ii(2) of US First Written Submission.   
37 Panel Report, US – FSC (Article 21.5 – EC) , para. 8.132 
38 United States – Section 337 of the Tariff Act of 1930 , Panel Report, adopted 7 November 1989, 
BISD 36S/345, para. 5.11. 
39 United States – Standard for Reformulated and Conventional Gasoline , Panel Report, WT/DS2/R, 
adopted 20 May 1996, as modified by Appellate Body Report, WT/DS2/AB/R.   
40 United States – Tax Treatment for "Foreign Sales Corporations" , Appellate Body Report, 
WT/DS108/AB/RW, adopted 29 January 2002, para. 215 (emphasis added).  WT/DS174/R/Add.1 
 Page A-89 
 
 
 Q34.  Is there a public policy requirement specific  to GIs which underlies the requirement that a 
person wishing to object to a registration under Regulation (EC) No. 2081/92 must send an objection 
to the EC Member State or authorities of a third co untry in which he resides or is established, rather 
than directly to the Commission?  EC 
 
Q35.  Has an objection to the registration of a name under Regulation (EC) No. 2081/92 ever been 
filed by a person from a third c ountry?  If so, what happened?  EC 
 Q36.  Has any person ever sent an objection to th e registration of a name under Regulation (EC) 
No. 2081/92 to your authorities?  If not, do you know  the reason?  If so, did your authorities transmit 
it to the EC Commission?  USA, AUS  
 
Response:   
 
66. As in the case of registrations, no US gove rnment agency has established regulations or 
procedures to receive, process, or transmit objections  to the registration of names under the EC GI 
Regulation.  Therefore, US persons have no mean s of raising objections within the meaning of 
Article 12b of the EC GI Regulation.  After consu lting with agencies to which such objections might 
have been presented, the United States is not awar e of any formal objections being presented to it to 
be processed by the United States in accor dance with the EC GI Regulation.  
 
67. It is a matter of public record, however, that there are a considerable number of US 
stakeholders  that are negatively impacted by the registration of GIs in the EC, but who did not have 
the means to present their concerns or objections to  the EC Commission.  The United States attaches, 
as Exhibit US-39, a letter from US Dairy Export C ouncil and the National Milk Producers Federation 
to the Office of the United States Trade Representa tive, dated March 26, 2004, which states that 
because of the discriminatory nature of the GI Regul ation, "dairy producers and processors have been 
unable to prevent the registration as protected GIs in the EU of a number of cheese types that had 
clearly become generic names before their registrati on."  This interferes with their ability to use food 
names that they have developed over a large number of years.   68. In addition, the EC has apparently register ed three names from the Czech Republic as part of 
the accession protocol of the Czech Republic to the European Union.
41  The registration of these 
names is of concern to a US stakeholder, but the United States is aware of no available means for that stakeholder to object to the registration.  Under Ar ticle 7 of the GI Regulation, an objection is based 
on a review of the application for registration of a name and the product specification that 
accompanies the application.  In the case of th ese three names, there was no application for 
registration, and, as far as the United States is aw are, no product specification.  Indeed, repeated 
requests for a copy of any proposed product specifi cation for these names have been rebuffed by the 
EC.  Nor, as far as the United States is aware, was any application for registration made public by the EC under Article 6(1) and (2) of the GI Regulation.   In sum, it appears th at these names have been 
registered without any ability to object to them.  Nor was there an ability to object to other names 
registered as GIs upon accession of new EC member St ates, or upon adoption of Regulation 2081/92.  
This is significant, since of the 612 GIs registered in  the EC, 487, or 80 percent, were registered in 
this way.
42 
 
Q37.  Please indicate examples of other internatio nal arrangements, such as the Madrid Protocol, 
under which national governments cooperate by acting as agents or intermediaries in the protection 
                                                      
41 These three names were provided as Exhibit COMP-3.c, paras. 18(a)-(b). 
42 The 487 GIs registered in this way are recorded in Commission Regulation 1107/96, as amended 
(Exhibit COMP-3(a)).  The 125 remaining registered GIs are recorded in Commission Regulation 2400/96, as 
amended (Exhibit COMP-4(a)). WT/DS174/R/Add.1 
Page A-90  
 
 of private rights.  Which of these arrangements ar e established under international treaties and which 
under the legislation of one of the parties to the arrangement?  Which are relevant to the matter 
before the Panel?  USA, AUS, EC  
 
Response:  
 
69. There are a number of examples in which par ties have voluntarily come together to mutually 
agree to facilitate the protection of private rights.   Under the Madrid Protocol, the United States, like 
other Contracting Parties, agrees to provide a mechanism for US trademark owners to file an international application through the United States Pa tent and Trademark Office (" USPTO") that is 
then forwarded to WIPO, which sends the applicati on to the national office of the Contracting Parties 
in which the applicant requested an extension of prot ection.  This Protocol is a mechanism of mutual 
convenience for trademark owners to which the Unit ed States and other countries voluntarily agreed: 
instead of having to file applications in numerous countries, the trademark owner files one application, which is then forwarded to those c ountries (which, then process the application according 
to their domestic trademark law).  This is not an example in which one WTO Member is requiring that 
trademark applications from nationals of anothe r WTO Member be submitted to that Member, 
reviewed for compliance with the other
 Member's trademark law, and then transmitted along with a 
demonstration that particular protection and enfor cement regimes are in place in the territory of the 
national making the application.    
70. Similarly, the Patent Cooperation Treaty (P CT) provides for a filing mechanism in which a 
patent applicant can file an international patent  application with the patent office of the PCT 
Contracting State in which they reside, eventua lly enter national stage processing of the patent 
application, and thereby effectively apply for patent protection for an invention in each of the relevant 
Contracting States.  Under the PCT, the applican t may obtain a non-binding search and examination 
of the application, but the final determination on patentability is made by, and under the national law 
of, each of the designated Contracting Parties.  On ce again, this is an agreed mechanism for the 
mutual convenience of the Contracting Parties' nationals: it is not a case of one WTO Member unilaterally requiring another Member to assess or en sure compliance with the first Member's patent 
laws, or to demonstrate the existence of any par ticular protection or enforcement mechanism within 
its territory.   
 
71. Another example in the patent area is the Budapest Treaty, which provides that Contracting 
States allowing or requiring the deposit of microorga nisms as part of a patent application shall 
recognize the deposit of a microorganism with any in ternational deposit authority.  As part of this 
treaty, the Contracting Parties also agree to a set of requirements with respect to those deposits.  
Again, this is not the case of one WTO Member requiring another Member to assess whether the 
deposit complies with the first Member's laws.  To th e contrary, the Contracting Parties have mutually 
agreed to a set of requirements with respect to  these deposits.  And again, there is no unilateral 
requirement that the other Member demonstrate to the first Member that it has put into place a particular protection or enforcement mechanism within its territory.  
72. These examples are relevant for several reasons.  First, they facilitate, rather than hinder, the 
ability of foreign nationals to seek intellectual property rights in the territories of other Treaty 
Members.  Second, they recognize the validity of the underlying intellectual property right – as created in the territory of any Treaty Member.  In other words, no Treaty Member is obligated to meet 
the standards of another Treaty Member to ensure that its nationals are eligible to seek and obtain 
protection in the territories of other Treaty Member s.  Further, in none of these agreements were 
WTO Members unilaterally imposing particular protection or enforcement regimes on another 
Member.  Rather, recognizing that private parties seek protection for their private rights directly under the laws of the Member in which protection is sought, these agreements provide voluntary 
mechanisms for facilitating the pursuit of such protection.    WT/DS174/R/Add.1 
 Page A-91 
 
 
  
Q38.  If a group or person interested in a GI in  your territory were to send an application for 
registration or objection to registration under Re gulation (EC) 2081/92 to your authorities, would 
your Government be able and/or willing to transmit such an application to the EC Commission?  If 
not, please explain why.  USA, AUS  
 
Response:  
 
73. As an initial matter, the important questi on is not the willingness of the United States to 
transmit an application or objection, but whether,  by requiring Members to do so the EC is making 
legal means available to all interested parties  and is according no less favorable treatment to all US 
nationals  than it provides to EC nationals.  As noted above, where "Member to Member" interactions 
exist, they are generally established as the result of a negotiated treaty – not  as the result of the 
unilateral requirements of one Member.  
74. This said, from a practical point of view, in  the case of the United States, it would probably 
not be difficult to designate an office in the US government to perform a purely ministerial act of 
transmitting registration applications and objections to the EC.  However, this fact alone is not 
particularly relevant, for several reasons.  First, th e fact that the United States may be able to set up 
such an office does not mean that all WTO Member s would be in a similar position from a resource 
point of view.  Nationals of countries who cannot ar e effectively barred from access to the EC system.  
Second, the fact that the United States would likely be willing to transmit all such documents does not 
mean that all WTO Members would.  It may well be that, in order to avoid aggravating already 
difficult negotiations with the EC over GIs, fo r instance, other WTO Members would hesitate 
transmitting a controversial or politically sens itive registration application or objection.  
 
75. Perhaps more significant, the EC GI Regulation does not simply require the transmission of 
applications and objections.  Putting aside the fact that a WTO Member must first satisfy equivalence 
and reciprocity requirements under Article 12(3) of the GI Regulation before it can even apply for a 
GI Registration, Article 12a(2) of the GI Regula tion would require the United States to (1) make a 
determination that the requirements of the GI Regul ation are satisfied; (2) provide a description of the 
legal provisions and usage on the basis of whic h the geographical indication is protected or 
established in the United States; (3) make a decl aration that the full inspection structures for 
agricultural products and foodstuffs are established in the United States ( i.e., the same inspection 
structures required of EC member States); and submit other documentation that would support the 
application.  Aside from the fact that these are requirements that go beyond mere "transmission", it is not even clear on what basis a US government aut hority would be in a position to assess whether the 
application meets the requirements of the EC GI Regul ation.  Similar questions arise with respect to 
whether a person has standing under the GI Regulation to object to a GI registration, or whether the objection is sufficiently substantiated.    
Q39.  Does an EC member State participate in decision-making on a proposed registration either in 
the Committee established under Article 15 of Regu lation (EC) No. 2081/92 or in the Council of 
Ministers, where that EC member State transm itted the application or an objection to it to the 
Commission?  Is the EC member State identified with the applicant or person raising the objection in any way?  Are there any limits on the participation of the EC member State – for instance, can it 
object to an applicatio n which it transmitted?  EC 
 
Q40.  How many applications to register names under Regulation (EC) No. 2081/92 have been 
considered by the Committee established under Artic le 15 of the Regulation or the Council of 
Ministers?  EC 
 WT/DS174/R/Add.1 
Page A-92  
 
 Q41.  In paragraph 137 of your first written submi ssion, you indicate that the term "such names" in 
the second sub-paragraph of Article 12(2) of Regulation (EC) No. 2081/92 is a reference to the first 
sub-paragraph of Article 12(2), and that this means that the requirem ent to indicate the country of 
origin applies where "a protected name of a thir d country is identical to a Community protected 
name".  Please clarify the meaning of the following term s, as used in Article 12(2) of Regulation (EC) 
No. 2081/92: 
  (a) what is the meaning of the term "prot ected" in the phrase "a protected name of a 
third country"? 
 
 (b) does the phrase "a Community protect ed name" cover both names of geographical 
areas located in the EC as well as in third countries, registered under the 
Regulation? 
  (c) does the requirement to indicate the c ountry of origin apply also where a name of a 
geographical area located in the EC is identical to a Community protected name 
(irrespective of whether this Community protected name is the name of a geographical area located in the EC or in a third country).  EC 
 Q42.  If Article 12(2) of Regulation (EC) No. 208 1/92 applies to the registration of a name of a 
geographical area located in the EC that is identical  to a name, already registered in the EC, of an 
area located in a third country, what is the differen ce in its scope compared to Article 6(6) of the 
Regulation?  Why is it necessary to cover this situation in both provisions?  EC 
 Q43.  Where does Regulation (EC) No. 2081/92 provide for the registration of a name of a 
geographical area located in a third country WT O Member which is a homonym of an already 
registered name?  Where does it provide for the re gistration of a name which is a homonym of an 
already registered name of a geographical area located in a third country WTO Member?  EC 
 Q44.  Can the EC provide the Panel with any  official statement predating its first written 
submission that Article 12(2) of Regulation (EC)  No. 2081/92 applies to names of geographical areas 
located in the EC and that Article 12(2) will be app lied on the basis of the date of registration?  EC 
 
Q45.  With respect to paragraph 135 of the EC 's first written submission, could the Council of 
Ministers prevent a registration because the Commission applied Article 12(2) to names of 
geographical areas located in the EC on the basis of the date of registration?  EC 
 
Q46.  Has a judicial authority ever ruled on the a pplicability of Article 12( 2) of Regulation (EC) 
No. 2081/92?  If the Commission applied Article 12(2) to the name of a geographical area located in the EC on the basis of the date of registration, coul d that action be subject to judicial review due to 
the fact that the area was located in the EC?  EC 
 Q47.  Are you aware of any GIs registered under Re gulation (EC) No. 2081/92 that are identical or 
confusingly similar to Community protected  trademarks owned by your own nationals?  USA, AUS  
 
Response:  
 
76. Those stakeholders with the strongest direct interest in trademark rights have a substantial 
concern that registered GIs can and will give rise to confusion with trademarks in the marketplace, 
and that the trademark owner would be powerless to prevent such use.  Trademark owners see a real 
threat in the GI Regulation.  In this connection th e United States would like to share with the Panel a 
written comment that the United States received on Ma rch 26, 2004, before this Panel was composed, 
from the International Trademark Association (INTA),  which is attached as Exhibit US-45.  INTA  WT/DS174/R/Add.1 
 Page A-93 
 
 
 describes itself as a 126-year-old not-for-profit organi zation of more than 4000 members from more 
than 150 countries and the largest organization in the world dedicated solely  to the interests of 
trademark owners.  INTA expresses its concern,  on behalf of its members, that the forced 
"coexistence" between trademarks  and confusingly similar GIs in the GI Regulation, "which 
introduces consumer confusion into the marketplace and impairs the substantial investment made by 
trademark owners, is incompatible with the fundame ntal rules of exclusivity of the prior right as 
endorsed in Article 16 of the TRIPS Agreement and is highly discriminatory against trademarks". 
 77. In addition, there are three registered geogr aphical indications, set out in paragraph 18 of 
Annex II of the Czech Republic's Act of Accession (included as Exhibit COMP-3.c) that present 
concerns.  The names are Budejovické pivo, Ceskob udejovické pivo and Budejovický mešt'anský var.  
 78. Based on these registrations, a Czech produ cer has claimed entitlement to use the names 
"Budweiser Budvar", "Budweis",  and "Budbräu"  on Czech beer sold in Sweden.  In trademark 
infringement proceedings pending before the Swed ish courts, a US company holding prior valid 
registered Swedish trademarks for the names BUDWEISER, BUD and BUDWEISER KING OF 
BEERS has brought trademark infringement claims  against the Czech producer, arguing that use by 
the Czech producers of "Budweiser Budvar", "Budw eis", and "Budbräu" on Czech beer sold in 
Sweden raises a likelihood of confusion.  In its defense, the Czech producer  has argued that the GI 
registration recorded in paragraph 18 of Annex II of the Czech Republic's Act of Accession  includes 
the right to use the registered GIs (Budejovi cké pivo, Ceskobudejovické pivo and Budejovický 
mešt'anský var) in translation, and that "Budwei ser Budvar", "Budweis", and "Budbräu" constitute 
German translations of one or another of the three registered GIs.    79. Additionally, as noted at paragraph 50 of th e United States' oral statement, there are many 
registered trademarks around the world that inco rporate or sound like geographical names, which 
could give rise to a likelihood of confusion.  For example, FARO is a registered Community 
Trademark used in connection with coffee and tea.
43  If the residents in the town of Faro, Portugal, 
begin to produce coffee or tea, and these products ar e registered pursuant to the GI Regulation, then 
the owner of the registered Community Trademark will be unable to prevent the rightholders of the Faro GI from using the Faro name in a manner that  causes a likelihood of consumer confusion.   
 Q48.  Would the United States pursue any claim in  respect of Article 12(2) of Regulation (EC) 
No. 2081/92 if that provision only applies to identical names?  USA  
 Response:  
 80. Yes.  Although the United States submits that Article 12(2) appears to apply to all protected 
names of a third country, that provision is inconsiste nt with the national treatment obligations even if 
it applies only to third country names that are identic al to protected EC name.  In effect, under such a 
reading of Article 12(2)  in the case of identical na mes, it is the third country GI, and not the EC GI, 
that must be burdened by a clear and visible indication of the country of origin on the label.  This is a 
violation of national treatment obligations. 
 
Q49.  Do you seek separate rulings on the procedur al aspects of Regulation (EC) No. 2081/92 or a 
ruling on the Regulation as a whole?  For example, should the provision in Article 12(2) be examined 
in isolation, or would it be appropriate to adopt  an approach like the Panel in Korea – Beef, which 
only examined a display sign requirement within its findings related to a system as a whole?  USA, 
AUS, EC  
 
                                                     
 
43 EC OHIM Application No. 000957100 (Registered March 24, 2000).  Exhibit US-46. WT/DS174/R/Add.1 
Page A-94  
 
 Response:   
 
81. The United States is seeking specific findings on each of the aspects of the EC GI Regulation 
it has raised, in order to assist in secu ring a positive result in this dispute. 
 Q50.  In paragraph 451 of its first written subm ission, the EC argues that labels which address the 
geographical origin of a product cannot be cons idered a technical regulation under the TBT 
Agreement, since they do not apply to a "product, pr ocess or production method".  Why in the EC's 
view is the geographical origin of a product not rel ated to that product or its process or production 
method?  Does the coverage of the TBT Agreement w ith respect to labels depend on the content of the 
labels?  EC 
 Q51.   How should the term "like products" be interpreted under Article 2.1 of the TBT Agreement?  If the labelling requirement in Article 12(2) of Regulation (EC) No. 2081/92 applies to situations 
where identical names arise between imported pro ducts and EC products, but does not apply to 
situations where identical names arise between two EC products, to what extent would this be a 
distinction between "like situations" rather than a distinction between "like products"?  AUS, EC  
 Q52.  Does Australia allege that Article 12(2) of Regulation (EC) No. 2081/92 provides any less 
favourable treatment to imported pr oducts besides labelling costs?  AUS  
 
Q53.  The EC argues in paragraph 88 of its first written submission that Article 12(2) of Regulation 
(EC) No. 2081/92 is meant to be read in the following way:  "whichever indication is registered later 
would normally be required to indicate the country of or igin."  If the EC interpreted Article 12(2) this 
way in practice, would this satisfy Australia, or would Australia also view this interpretation as 
providing less favourable trea tment to imported products?  AUS  
 
Q54.   Article 12(2) of Regulation (EC) No. 2081/ 92 is designed to avoid "practical risks of 
confusion".  How would the application of the country of origin label on the basis of a product's date 
of registration help avoid those risks of confusion?  EC 
 Q55.  Does the TRIPS Agreement apply as l ex specialis as regards GATT 1994 and the TBT 
Agreement, with respect to a practical condition to  differentiate homonymous or identical GIs on a 
label?  Please comment in the light of Article 23.3 of the TRIPS Agreement, which is applicable to 
homonymous GIs for wines, and the national treatment obligation, which is applicable to GIs for other products.  USA, AUS, EC  
 
Response:  
 
82. WTO Members must comply with each of the obligations that apply with respect to homonymous or identical GIs – whether the TRIPS Agreement, GATT 1994, or the TBT Agreement.  
Where the TRIPS Agreement provides, for instance, in Article 23.3 that Member should determine the 
practical conditions under which homonymous wine  indications will be differentiated from each 
other, such differentiation should not result in l ess favorable treatment of nationals of other WTO 
Members with respect to the protection of GIs, and should not result in less favorable treatment of products from other WTO Members.  As the Appe llate Body has made clear on several occasions, 
different treatment is not necessarily less favorable treatment.    Q56.   With reference to paragraphs 17-21 of the US  oral statement, does the Panel need to consider 
the US arguments concerning the declaration unde r Article 12a(2) of Regulation (EC) No. 2081/92 
and the inspections structures, if it reaches a conclu sion on the applicability to WTO Members of the 
equivalence and reciprocity cond itions in Article 12(1)?  USA  
  WT/DS174/R/Add.1 
 Page A-95 
 
 
 Response:  
 
83. Yes, the Panel should consider the US argumen t with respect to the required declaration and 
the inspection structures regardless of its findings with respect to the applicability to WTO Members 
of the equivalency and reciprocity  conditions.  The reason is that if the Panel finds that the GI 
Regulation requires WTO Members to comply with  the reciprocity and equivalence conditions 
specified in the Regulation (rejecting the unsupporte d opinion of the Commission), and further finds 
that these conditions are inconsistent with WT O obligations, the EC could simply amend the 
regulation to remove these conditions in Article  12(1), with the result that the equivalence 
requirement imposed through the inspection structure requirement in Article 12a(2) might remain.  It 
is important to a resolution of this dispute, ther efore, that the Panel make a finding as to the EC 
requirement that the United States adopt the same inspection structures as are required of EC member 
States.    84. In addition, the arguments concerning the d eclaration and the inspection structures are also 
relevant to the argument that requiring the inter cession of the US government is itself inconsistent 
with national treatment and with Article 22.2 of the TRIPS Agreement, which is separate from the 
argument that requiring reciprocity and equivale nce is inconsistent with national treatment 
obligations.  
Q57.   Does the EC consider that it may appl y equivalence and reciprocity conditions to WTO 
Members under Article 12a(2) or any other prov ision of Regulation (EC) No. 2081/92, even if 
Article 12(1) does not apply to them?  EC  
 Q58.  Please clarify whether your claim is that  the requirement of the existence of an inspection 
structure as a condition for the registration of a GI is inconsistent with WTO obligations per se, or 
the particular inspection structures requirem ents under Regulation (EC) No. 2081/92, are 
inconsistent with the EC's WTO obligations.  In th e latter case, please specify in detail which aspects 
of the inspection structures required under the Re gulation are inconsistent with the EC's WTO 
obligations.  USA, AUS  
 
Response:  
 
85. Dictating that a Member have a particular inspection structure to (1) enforce agricultural 
product and foodstuff GIs in general in the United  States, and (2) ensure compliance with the 
requirements of the EC GI Regulation, is itself inco nsistent with the EC's WTO obligations.  Such a 
unilateral requirement by the EC is not related to  the question of whether the product for which GI 
protection is sought in the EC qualifies for that protection under the specifications submitted under the 
GI Regulation for that product.  Indeed, the particular method chosen by another WTO Member to enforce GI rules in its territory is not relevant to such a determination.   
 
Q59.  Under what circumstances would the Commission consider the holder of a GI certification 
mark registered in another WTO Member to meet the requirements for in spection structures under 
Article 10 of Regulation (EC) 2081/92 (read toge ther with Article 12a of that Regulation)?  EC 
 Q60.  Australia argues that the EC's inspection structures requirements are a technical regulation 
under the TBT Agreement (paragraphs 209-224 of its fi rst written submission).  Is there a dividing 
line lies under the TBT Agreement between a techni cal regulation and a conformity assessment 
procedure?  If so, where does it lie?  AUS, EC  
 Q61.  If the inspection structures are conformity  assessment procedures, are the eligibility criteria 
for registration under Regulation (EC) No. 2081/92 , against which conformity is assessed, technical 
regulations?  AUS, EC
 WT/DS174/R/Add.1 
Page A-96  
 
  
Q62.  With respect to paragraph 259 of Australia's  first written submission, can Australia provide 
examples of alternatives to the EC's inspection structures which would be less trade restrictive and 
achieve the same objective?  AUS  
 
Q63.  What does Article 14(2) of Regulation (EC) No. 2081/92 mean where it provides that a prior 
trademark "may continue to be used"?  Can a trademark owner invoke the rights conferred by the 
trademark registration against the user of a GI u sed in accordance with its GI registration?  EC 
 Q64.  Does Article 14(2) of Regulation (EC) No. 2081/92 implement the provision in Article 24.5 of 
the TRIPS Agreement that measures adopted to im plement the Section on GIs shall not prejudice 
"eligibility for or validity of the registration of a tr ademark, or the right to use a trademark" or does it 
only implement the provision that such measures sh all not prejudice "the right to use a trademark"?  
EC 
 
Q65.  Does the scope of Article 14(2) of Regul ation (EC) No. 2081/92, as drafted, include 
trademarks applied for or registered, or to which ri ghts have been acquired, subsequent to both dates 
set out in Article 24.5(a) and (b) of the TRIPS Agreement?  EC 
 Q66.  Has Article 14(2) of Regulation (EC) No. 2081/92 ever been applied in a specific case?  For 
example, what did the national courts finally decide  in the Gorgonzola case, referred to in Exhibit 
US-17 and in footnote 140 to paragraph 163 of the US  first written submission, after the order of the 
European Court of Justice?  EC 
 Q67.   Does Article 14(3) of Regulation (EC) No. 2081/92 affect the possibility of coexistence of GIs 
already on the register with prior trademarks, such as Gorgonzola?  In these cases, is Article 14(3) 
relevant to the applicability of Article 14(2)?  EC 
 
Response:  
 
86. In the view of the United States, Article 14(3)  does not affect the possibility of "coexistence" 
of GIs already on the register with prior trademar ks.  The EC argues that "geographical names" are 
generally not distinctive and, therefore, not often apt for registration as trademarks.
44  This argument 
attempts to minimize the violation of TRIPS Article  16.1 by arguing that few trademarks that contain 
or consist of a GI are registrable, and thus that th ere will rarely be a conflict between a trademark that 
contains or consists of a GI and an identical or si milar GI.  Even if the Panel were to accept that the 
potential set of trademarks is small, however, tho se trademarks that are validly registered would 
potentially fall in the category of trademarks subject to "coexistence" under Article 14(2).  
 87. As the United States stated at the first meeting,
45 Article 14(3) of the GI Regulation does not 
entirely satisfy the obligations under Article 16.1 of the TRIPS Agreement.  First, Article 16.1 
articulates a right that is owed under the TRIPS Agreement to the owner of any valid registered trademark, while Article 14(3) comes into play (and does so only through action by the EC) only 
where there exists a trademark with a reputation, renown, and history of use.  Second, it is not 
necessarily possible, at the time of registration of the GI, for the trademark owner to know from the GI registration itself whether the use of the GI will be confusing.  For example, a registered GI may 
unexpectedly be used in translation, or in a manne r that emphasizes certain aspects or letters of the 
geographical name, in a way that causes a likeli hood of confusion with respect to a registered 
trademark.  By the time a registered trademark owner realizes that a registered GI is being used in a 
manner that causes a likelihood of confusion with re spect to the trademark, however, it may be too 
                                                     
 
44 E.g., EC First Written Submission, para. 279. 
45 See Oral Statement by Un ited States, paras. 51-55.  WT/DS174/R/Add.1 
 Page A-97 
 
 
 late to challenge the registrati on under Article 14(3).  Third, as explained in the US response to 
Question 36, GIs may be registered outside the sc ope of the established procedures under the GI 
Regulation, such as through an accession treaty, in a manner that precludes any objections based on 
Article 14(3) or any other provision of the GI Regulation.   Q68.  Article 14(3) of Regulation (EC) No. 2081/ 92 mentions certain criteria.  If these are not 
exhaustive, why does is it not expressly stated as in Articles 3(1), 4(2) and 6(6) of the Regulation?  Do other criteria, such as similarity of signs and goods fall within "reputation and renown"?  Is the 
criterion of "length of time [a trade mark] has been  used" relevant to its liability to mislead if the 
trademark has not been used for a significant, or considerable, length of time?  EC 
 
Q69.  Can the EC provide the Panel with any  official statement predating its first written 
submission that application of the grounds for regis tration, invalidity or revocation of trademarks and 
Article 14(3) of Regulation (EC) No. 2081/92 will or should be applied in such a way as to render 
Article 14(2) inapplicable?  EC 
 
Q70.  Do the EC member States agree with the Commission's submission to this Panel that the 
terms of Article 14(3) of Regulation (EC) No. 2081/92, if properly interpreted, are sufficient to 
prevent the registration of any confusing GIs?  Could the EC member States apply national trademark 
laws in a way that made this impossible?  Coul d the Council of Ministers prevent the application of 
Article 14(3) of the Regulation if proposed by  the Commission in a specific case and apply 
Article 14(2)?  EC 
 Q71.  Has a judicial authority ever ruled on the in terpretation of Article 14(3) of Regulation (EC) 
No. 2081/92?  If Article 14(3) of the Regulatio n, the Community trademark regulation and national 
trademark laws were applied in such a way as to pr event the registration of GIs that were confusing 
with a prior trademark, could this be subject to judicial review?  EC 
 Q72.  The Panel notes the responses of Members to the Checklist of Questions in document 
IP/C/W/253/Rev.1 cited by the EC in footnote 150 of its first written submission, which show that 
there are diverse approaches taken by  several Members to accommodate possible conflicts between 
GIs and prior trademarks.  Would this mean that th e TRIPS Agreement, in particular Article 24.5, 
allows for some degree of flexibility for individual  WTO Members to implement their obligations?  
USA, AUS  
 
Response:  
 88. The TRIPS Agreement does allow for a cer tain amount of flexibility in implementing 
obligations.  As Article 1.1 of the TRIPS Agreement states, "Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own legal system 
and practice."   89. However, Article 1.1 is equally clear that Members are to give effect to the provisions of the 
TRIPS Agreement, and that Members may implemen t more extensive protection than is required 
provided that such protection does not contravene the provisions of the Agreement.  One such provision that may not be contravened is Article  16.1.  A Member must, under Article 16.1, grant 
trademark owners the right to exclude all others fro m using identical or similar signs that result in a 
likelihood of confusion.  Similarly, a Member must observe its obligatio ns under Articles 22.2 and 
22.3.  As the United States explains in response to  question 79, there is no thing inconsistent or 
mutually exclusive about these obligations.  In determining what "flexibility" to grant WTO WT/DS174/R/Add.1 
Page A-98  
 
 Members, the Panel should adopt an interpretation th at gives each provision its full scope, in light of 
the presumption in public international la w against conflict between obligations.
46   
 90. Further, the United States notes that the referenced document discusses conflicts between 
trademarks and GIs in general term s, and generally with respect to the issue of whether a GI will be 
registered.  It does not, however, address a key questi on that is before the Panel: regardless of whether 
a GI is registered or not, does the trademark owner retain his Article 16.1 rights to prevent uses of 
similar or identical signs that give rise to a like lihood of confusion.  The EC essentially argues that 
Article 22 supersedes Article 16.1 in importan ce (although the EC also supports the contrary 
argument by saying that – under TRIPS – GI rights do not supercede trademark rights; thus it is not 
entirely clear what the EC's actual position is), and th en supports this argument by suggesting that the 
US wine labeling system  provides for "co-existence. "  The issue, however, is the right of trademark 
owners to prevent confusing uses of his signs.  Un der US law, consistent with the requirements of 
Article 16.1 of the TRIPS Agreement, the United St ates provides the legal means for the owners of 
registered trademarks to prevent infringing uses of signs.  See also  response to question 3 from the 
European Communities. 
 
Q73.  Please supply a copy of the wine regulati ons referred to in paragraph 16 of the EC oral 
statement.   EC  
 Q74.  Which particular GIs did the EC prot ect under Regulation (EC) No. 2081/92 prior to 
1 January 1995?  Is Article 24.3 of the TRIPS Agreement relevant to any other GIs?  EC 
 Q75. Which party bears the burden of proof in relation to:   (a) Article 24.5 of the TRIPS Agreement?  In  particular, does this relate to the scope of 
the obligation in Article 16.1?  Does it  create an exception for measures otherwise 
covered by Article 16.1?  Or neither?  
 
Response:  
 
91. Since the EC is arguing that Article 24.5 is an affirmative defense to the US claims that the GI 
Regulation is inconsistent with the EC's obligati ons under Article 16.1 of the TRIPS Agreement (that 
is, that Article 24.5 is an exception to Article 16.1), it is the EC, as the party asserting the defense, that 
bears the burden of proof.  As the Appellate Body noted in  Japan – Apples , "although the 
complaining party bears the burden of proving its case, the responding party must prove the case it seeks to make in response."
47 
 
92. The United States notes, however, that, in its view, Article 24.5 is not an exception to the 
obligations in Section 2: Trademarks, which includ es Article 16.1; rather it is an exception to the 
obligations in Section 3: Geographical Indications .  See also Response to question 78 below.   
 
 (b) Article 17 of the TRIPS Agreement?  In  particular, does this only permit exceptions to 
the rights conferred by a trademark, or does it also create an exception to the 
obligations imposed on Members?  USA, AUS, EC  
 Response:  
 93. As the party asserting that its GI Regulation fa lls within the Article 17 exception, it is the EC, 
as the party asserting the defense, that bears the bur den of proof.  As the Appellate Body noted in 
                                                     
 
46 Panel Report, Indonesia – Autos , para. 14.28. 
47 Para. 154.  WT/DS174/R/Add.1 
 Page A-99 
 
 
 Japan – Apples , "although the complaining party bears the burden of proving its case, the responding 
party must prove the case it seeks to make in response."48 
 94. Article 17 of the TRIPS Agre ement permits Members to provide  limited exceptions to the 
rights conferred by a trademark, such as fair use of descriptive terms.  However, the Members, in 
providing for such exceptions to trademark rights, must  ensure that they are limited, and must ensure 
that any such exceptions take account of the legitimat e interests of the owner of the trademark and of 
third parties.  Indeed, as the United States explained in its oral statement, the exception to Article 16.1 
rights in the EC GI Regulation is not limited and it does not take into account the legitimate interests 
of the trademark owner or of third parties.  As the United States noted in its oral statement, at 
paragraph 75, it is possible to inform consumers ab out the origin of a product and its characteristics 
through the use of descriptive terms in a non-trad emark sense without affi rmatively confusing the 
consumer about the source of the goods.  It is po ssible in this sense simultaneously to protect the 
legitimate interests of the consumer, the GI owne r and the trademark owner.  The GI Regulation 
makes no such distinctions, but simply offers  a broad immunity from a finding of trademark 
infringement based purely on whether a particular GI has been registered.   
 95. Article 14(2) of the GI Regulation, which the EC asserts meets the strict requirements of 
Article 17 of the TRIPS Agreement, automatically and in every case (according to its terms) divests a 
trademark owner of its right to prevent use of an iden tical or similar registered GI in a way that raises 
a likelihood of confusion.  This is so even if  the trademark owner could demonstrate that the 
particular use of the GI at issue does not qualif y as "fair use of [a] descriptive term[]."  Under 
Article 14(2), the EC adopts an irrebutable presumpti on that a registered GI's  use will, in all cases, 
without consideration of the particular circumstances,  constitute "fair use of descriptive terms."  In the 
view of the United States, this is not a limited exception.  
96. Finally, even under the EC's own interpre tation of TRIPS Article 17, the EC fails to 
acknowledge that non-geographic names are subject to registration under Article 2(3) of the GI 
Regulation ( e.g., Feta).  Nothing in the EC's interpreta tion explains how the Article 17 fair use 
exception applies to non-geographic names.  
Q76.  Article 24.5 of the TRIPS Agreement uses the phrases "validity of the registration of a 
trademark" and "the right to use a trademark".  Please set out your interpretation of these phrases, in 
accordance with the general rule of treaty interpretation in Article 31 of the Vienna Convention on 
the Law of Treaties and, if appropriate, the supplemen tary means in Article 32.  Please explain how 
you determine what is the relevant context.  USA, AUS, EC  
 
Response:  
 
"validity of the registration of a trademark" 
 
97. As the United States explained in paragraphs 61-62 of its oral statement, the prohibition on 
prejudicing the "validity of the registration of a trademark," within the meaning of Article 24.5, 
requires Members to provide Article 16.1 rights to the trademark owner at issue.  If a trademark 
remains registered, then, under Article 16.1, the owner of that registered trademark must be given its 
Article 16.1 rights.    98. The ordinary meaning of validity is "[ t]he quality of being (esp. legally) valid,"
49 where 
"valid" refers to something "[p]ossessing lega l authority" or "legally acceptable or binding."50  
                                                      
48 Para. 154. 
49 New Shorter Oxford English Dictionary, p. 3541.  Exhibit US-47. 
50 New Shorter Oxford English Dictionary, p. 3541.  Exhibit US-47. WT/DS174/R/Add.1 
Page A-100  
 
 Registration means "[t]he action of registering or recording,"
51 and to "register" means to "[f]ormally 
enter or cause to be entered ... in a particular register."52  Therefore, under the ordinary meaning of 
these terms, the "validity of the registration" refe rs to the possession of legal authority accorded by 
virtue of the entrance of a trademark in a register.  Thus, the meaning of "validity of the registration of 
a trademark" must be read in connection with the legal authority accorded by trademark registration, 
which is the right provided for in Article 16.1, in  addition to rights under domestic law.  Article 16.1 
demonstrates the clear link between registration an d the legal authority that must be accorded the 
trademark owner by the registration – the right to prevent all others from using a similar or identical sign that causes a likelihood of confusion.  Trademar k registration is virtually meaningless without the 
associated Article 16.1 rights.   
 
99. Moreover, as the United States has explained in its oral statement,
53 TRIPS negotiating 
history reveals that the language of Article 24. 5 evolved from a simple prohibition against 
invalidation of registration (in the Brussels Draft) to a requirement that Members not even "prejudice" 
the validity of the trademark registration.54  This is a more stringent requirement, as the ordinary 
meaning of the term "prejudice" is "injury, damage, harm,"55 while the earlier version simply 
prevented complete eradication of the mark.  Thus , the addition of the word "prejudice" means that 
Article 24.5 protects more than just the removal of a trademark from the register, as the EC argues.  At a minimum, it must prevent Members from eliminating the core right of a trademark registration – the Article 16.1 right to prevent all others from confusing use.  
100. Article 15.1 of the TRIPS Agreement also pr ovides relevant context, as it requires that the 
only signs "capable of constituting a trademark" ar e signs that are "capable of distinguishing the 
goods or services of one undertaking from those of other undertakings".  Without the ability to exercise the Article 16.1 rights to prevent all othe rs from confusing uses, the trademark may lose this 
ability to distinguish, and therefore may no longe r be "capable of constituting a trademark."  
 
101. Thus, the loss of the ability to distinguish goods or services certainly prejudices the "validity of the registration of a trademark".  
"the right to use a trademark" 
 102. Beginning with the ordinary meaning, "right " refers to "[t]he st andard of permitted and 
forbidden activity".
56  "Use" is defined as the "applica tion or conversion to some purpose."57  Thus, 
the ordinary meaning of "prejudice ... the right to use" is the harm or damage to the permitted or 
forbidden activity associated with application of a trademark to its purpose.  From the context 
provided by Articles 15.1 and 16.1, the purpose of a tr ademark is to allow its owner to distinguish the 
owner's goods from the goods of others .  Under Article 15.1, any sign or combination of signs capable 
of distinguishing the goods or services of one undert aking from those of another must be capable of 
constituting a trademark.  Under Article 16.1, the owner of a registered trademark must "have the exclusive right to prevent all third parties ...  from using in the course of trade identical or similar 
signs for goods or services which are identical or sim ilar to those in respect of which the trademark is 
registered where such use would result in a likelih ood of confusion."  Further, Article 16.1 provides 
that this obligation does not affect the possibility of  making rights available on the basis of use.   
 
                                                     
 
51 New Shorter Oxford English Dictionary, p. 2529.  Exhibit US-47. 
52 New Shorter Oxford English Dictionary, p. 2528.  Exhibit US-47. 
53 Oral Statement of the United Stat es, paras. 64-65, Exhibit US-25. 
54 Exhibit US-25. 
55 New Shorter Oxford English Dictionary, p. 2333.  Exhibit US-47. 
56 New Shorter Oxford English Dictionary, p. 2598.  Exhibit US-47. 
57 New Shorter Oxford English Dictionary, p. 3531.  Exhibit US-47.  WT/DS174/R/Add.1 
 Page A-101 
 
 
 103. A contextual consideration in interpreting this  phrase is that the chapeau to Article 24.5 refers 
to certain trademarks "applied for or registered",  and the chaussette states that measures shall not 
prejudice "eligibility for or the validity of the regist ration of a trademark"; further, the chapeau also 
refers to certain trademarks whose rights "have b een acquired through use", and the chaussette refers 
correspondingly to the obligation not to prejudice the "right to use" a trademark.  Contextually, 
particularly considering that Article 16.1 specifically anticipates Members making trademark rights 
(e.g., the right to exclude others) available based on u se, there is support for an interpretation that the 
"right to use a trademark" refers, at least in pa rt, to the right provided for under a Member's national 
law to acquire and continue to maintain trademar k rights through use.  In this way, both phrases in 
this question – the "validity of the registration of a trademark" and the "right to use a trademark" refer 
to the right of the owner of the trademark to exclude others from using similar signs ( i.e., to be able to 
distinguish his goods from the goods of others), and the requirement of Article 24.5 is not to prejudice 
this right to exclude others.     104. There is support for this reading in the ne gotiating history.  The predecessor provision to 
Article 24.5, Article 24.2 of the Brussels Draft, of November 1990, containe d only an obligation not 
to take action to refuse or invalidate the registration of certain trademarks, with  no reference to use.  
By the time of the Dunkel Draft, a year later, in December 1991, the inclusion of trademarks "acquired through use" in the chapeau appears at th e same time as the obliga tion in the chaussette not 
to prejudice the "right to use a trademark".    
105. However, "the right to use a trademark" is not specifically 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 associated with  application of a trademark to  its purpose – would include an 
obligation with respect both to registered and non-re gistered trademarks not to damage the ability to 
use the trademark to distinguish the goods of the ow ner from the goods of others.  In this sense, too, 
not prejudicing the right to use the registered trademark means not prejudicing the ability of the owner of the registered trademark to use his trademark to distinguish his goods from the goods of others.  
Plainly, if the owner cannot exclude others from confusing uses of identical or similar signs, the 
owner's ability to use the trademark fo r its purpose is severely prejudiced.   
 Q77.  Article 24.5 of the TRIPS Agreement uses the phrase "right to use" a trademark.  Why did the 
drafters not choose to state, for example, "exclusive rights" or "rights under Article 16.1"?  Is that fact relevant to interpretation of the phrase "right to use" a trademark?  USA, AUS, EC  
 
Response:  
 
106. As suggested in the response to question 76, the phrase "right to use a trademark" references 
trademarks whose rights are "acquired through use", as set out in the Article 24.5 chapeau, and also the right to use a trademark for its purpose, i.e., to distinguish the trademark owner's goods from the 
goods of others.  It accurately describes the scope of  the exception to GI protection.  A reference to 
"exclusive right to use" would have been conf using, because the specific "exclusive right" in 
Article 16.1 is the right to exclude, not the right to use per se .
58  A simple reference to "exclusive 
rights", without the reference to use, would have been duplicative of the obligation not to prejudice 
the validity of the trademark, and also would not  have clearly addressed the issue of trademarks 
acquired through use.  Finally, simply referring to the "rights under Article 16.1" would also have 
been confusing, because there are three sets of rights  described in Article 16.1: the right to exclude 
others from confusing uses, in the first sentence; "exi sting prior rights" in the first half of the third 
sentence; and the "rights" made available by Memb ers on the basis of use, in the second half of the 
third sentence.  
                                                      
58 With respect to patents, Article 28 uses the word "exclusive" is a similar manner.   WT/DS174/R/Add.1 
Page A-102  
 
  
Q78.   With reference to paragraph 58 of the US oral statement, Article 24.5 of the TRIPS 
Agreement refers to trademarks;  certain Members implement GI obligations through collective and 
certification marks; Article 25.2 refers to more than one category of intellectual property, as does 
Article 4 of the IPIC Treaty as incorporated by Article 35 of the TRIPS Agreement.  Therefore, must 
the provisions dealing with each category of inte llectual property covered in Part II of the TRIPS 
Agreement be restricted to one Section?  Can the rights conferred by a category of intellectual property and an exception to them appear in different Sections of Part II?  USA, AUS  
 
Response:  
 
107. As the United States has noted, Article 24.5 is a clearly-labeled "exception" to the protection 
of geographical indications in Part II, Section 3 of  the TRIPS Agreement.  It is not an exception to 
trademark protection, which appears in Part II, Section 2.  
108. The United States would not extrapolate the inte rpretation of this specific provision to a broad 
conclusion that the provisions dealing with each cate gory of intellectual propert y covered in Part II of 
the TRIPS Agreement must be restricted to its own section.  Provisions that appear in one section of Part II, but that explicitly address rights related to a nother section of Part II, must, of course, be given 
effect.  By contrast, the United States does not believe  that a clearly-labeled "exception" to the scope 
of protection for a right defined in one section can be considered an "exception" to the scope of 
protection for a different right defined in another section.  
 109. In other words, a provision listed under the heading "exception" in a particular section 
logically carries with it the strong presumption that it is an exception to the scope of protection for the right defined in the section in which it appears.  An "exception" excepts or "exempts" something from 
"the scope of a proposition."
59  The "scope of the proposition" in a given section of Part II of the 
TRIPS Agreement must refer to the scope of protec tion accorded by the provisions of that section.  
Thus, an "exception" to the geographical indication section (Section 3) is an exception to the obligations with respect to geographical indica tions under that section.  This would appear 
particularly to be the case where, as here, each sec tion of Part II of the TRIPS Agreement has its own 
exception provision. 
 
110. By contrast, in the case of "transitional arrangeme nts," which appear in an individual "Part" of 
the TRIPS Agreement, the logical presumption is that the provisions are not limited to any one part or 
section unless otherwise indicated.  Suppose, instead, that each section of Part II of the TRIPS Agreement had its own individua l section entitled "transitional arrangements."  The presumption in 
that case would be that the transitional arrangement s apply to each individual section, whether it be 
for trademarks, patents, copyrights, etc.  This is the way in which the "excep tions" have been drafted. 
 111. The Appellate Body has inte rpreted provisions based on their place in the overall structure of 
the covered agreement at issue, giving careful consider ation to the headings or titles of the sections in 
which the provisions appear.  In Canada – Dairy , the Appellate Body stated that:   
 
A strong presumption arises that the language which is inscribed in a Member's Schedule under the heading, "Other terms and Conditions", has some qualifying  or 
limiting  effect on the substantive content or scope of the concession or commitment.
60   
                                                      
59 New Shorter Oxford English Dicti onary at  p. 872 (see definitions of "except" and "exception").  
Exhibit US-47. 
60 Canada – Measures Affecting the Importation of Milk and the Exportation of Dairy Products , 
WT/DS103/AB/R (adopted 27 October 1999), para. 134 (emphasis in original).  WT/DS174/R/Add.1 
 Page A-103 
 
 
 112. This is equally true of a heading "exceptions ."  An "exception" provision to the geographical 
indications section should therefore be interpre ted to limit the protection otherwise granted to 
geographical indications.  113. Apart from the placement of Article 24.5 in Section 3 of Part II, the United States has also 
noted that Article 24.5 does not substantively provide an exception to the scope of protection for 
trademarks set out in Article 16.1.  The exceptions  to the trademark rights are explicitly provided for 
in Article 17.  Rather, it provides a "shield" against anything in the GI Section that could adversely affect grandfathered trademarks.   Q79.  Is there a conflict between Articles 16.1  and 22.3 of the TRIPS Agreement?  How may a 
Member avoid or resolve any potential conflict?  USA, AUS  
 
Response:   
 114. The United States does not believe there is a conflict between Articles 16.1 and 22.3 of the 
TRIPS Agreement.  The obligations are not mutua lly exclusive and both can be implemented by a 
Member in a way that gives each its full scope.  As the United States noted at paragraph 133 of its 
first written submission and paragra phs 41-42 of its oral statement, the TRIPS Agreement contains 
obligations to provide trad emark and GI owners the right to exclude others from certain uses of signs 
or indications.  The right for trademark owners, under Article 16.1, is the right to exclude all others 
from using identical or similar signs in a way th at results in a likelihood of confusion.  Under 
Article 22.3, trademarks that mislead consumers in a given territory as to the origin of goods should 
be refused registration or, if they are registered, s ubject to invalidation.  Both of these provisions can 
and should be interpreted in a way that does not  presume a conflict between them, based on the 
presumption in public international law against conflict.
61  If a trademark is misleading to consumers 
in a given territory, it may be refused registration.  If registered, however, and if it is not subject to 
invalidation, it must provide its owner the legal basi s to exclude others within the territory from the 
confusing use of identical or similar signs.    
Q80.  Are any exceptions permitted to exclusive trademark rights under your domestic law for 
concurrent registrations, honest concurrent use or comparative advertising?  If so, are these limited 
to other trademarks?  Can they cover GIs?  USA, AUS  
 
Response:  
 
115. The United States provides for several de fenses to trademark infringement actions.  
Sections 33(b)(5) and (6) of the Lanham Act provide for what might be called honest concurrent use 
of two trademarks, but it should be emphasized that in the United States, concurrent use is allowed 
only to the extent that the marks are used in co mmerce in two different geographic areas within the 
United States.  To allow for concurrent use of the two marks in the same ar ea by two different owners 
would likely cause consumer confusion as to the source of the goods.  
116. Section 33(b)(5) specifically refers to a situ ation where prior common law rights have been 
established in a particular limited area that conflict with a later federally registered trademark.  This 
can lead to a court-ordered "concurrent use" of th e two marks, but – as mentioned above – in different 
                                                     
 
61 As recognized by the Panel in Indonesia – Autos , at para. 14.28, "in public international law there is 
a presumption against conflict," which "is especially re levant in the WTO context since all WTO agreements," 
including all the provisions of the TRIPS Agreement, "w ere negotiated at the same time, by the same Members 
and in the same forum."   WT/DS174/R/Add.1 
Page A-104  
 
 geographic areas within the United States.
62  Section 33(b)(6) refers to a situation where a registered 
mark owner charges that an earlier registered mark  infringes the later registered mark and the court 
can order concurrent use registrations.  Again, such  concurrent use would only be allowed in different 
geographic areas in the United States.63 
 
117. In the United States, these rules cover GIs, si nce GIs are also protected in the United States 
through the certification and collective mark system.    118. In addition, Section 33(b)(4) of the Lanham Act provides for a defense based on fair use of 
descriptive terms, e.g., the use of an individual's name or a descriptive term including of geographic 
origin.
64  The descriptive terms that are covered by the "fair use" defense cannot be used as 
trademarks, i.e., to distinguish the goods of one undertaking from those of other undertakings. The 
trademark in a descriptive term attaches only to th e specialized, secondary meaning that a word has 
acquired, and not to its original, primary descriptiv e context.  The fair use defense gives practical 
force to that distinction by protecting the public's ri ght to continue using the primary descriptive value 
of words and thus to use that aspect of a word th at falls outside the scope of the trademark. The 
central purpose of the fair use defense, in other word s, is to protect the particular descriptive usages 
that are not covered by the trademark and t hus are not, by definition, infringing uses.  
 119. In any case, "fair use" requi res a case-by-case determination of entitlement to the limited 
exception, upon challenge by a trademark owner.  For example,  in Schafer Co. v. Innco Management 
Corp ., 797 F.Supp. 477 (E.D. N.C. 1992), aff'd 995 F.2d 1064 (4th Cir. 1993), the owner of the 
SOUTH OF THE BORDER trademark (associated with a theme park located south of the border between North Carolina and South Carolina) cha llenged the use by a motel owner of the words 
"Border Exit" and "South of Border Exit" on highway b illboards that directed drivers to the motel.  In 
defense, the motel owner raised the fair use defense,  based on the fact that "South of the Border" is 
generally known as the name of the town surrounding and including the trademark owner's theme 
park.    120. The court first described the limits of the fair use exception under US law as follows: 
 
[The user invoking fair use] must adapt and design his usage of the geographical term 
so as not to cause a likelihood of customer confusion.
65  
                                                      
62  15 USC §1115(b)(5), Section 33(b)(5) of the Lanham Act, reads: "That the mark whose use by a 
party is charged as an infringement was adopted without knowledge of the registrant's prior use and has been 
continuously used by such party or those in privity with him from a date prior to (A) the date of constructive use of the mark established pursuant to section 7(c), (B) the re gistration of the mark under this Act if the application 
for registration is filed before the effective date of th e Trademark Law Revision Act of 1988, or (C) publication 
of the registered mark under subsection (c) of section 12 of this Act: Provided, however, That this defense or 
defect shall apply only for the area in which such continuous prior use is proved …." 
63 15 USC §1115(b)(6), Section 33(b)(6) sets forth another defense to infringement: "That the mark 
whose use is charged as an infringement was registered and used prior to the registration under this Act or 
publication under subsection (c) of section 12 of this Ac t of the registered mark of the registrant, and not 
abandoned:  Provided, however, that this defense or def ect shall apply only for the area in which the mark was 
used prior to such registration or such publication of the registrant's mark …." 
64 15 USC §1115(b)(4), Section 33(b)(4) of the Lanham Act, sets forth the defenses to a claim of 
infringement that include: "that the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party's individual name in his own business, or of the individual name of 
anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith 
only to describe the goods or services of such party, or their geographic origin …." 
65 Schafer Co. v. Innco Management Corp. , 797 F.Supp. at 481 (internal citations omitted).  WT/DS174/R/Add.1 
 Page A-105 
 
 
 Then, with respect to the particular use of "Borde r Exit", the court proceeded to examine the facts of 
the particular case at issue, in the following manner:  
The phrase "Border Exit" accurately describes th e location of the exit--Exit 1, either 
A or B--which travelers must take to reach defendant's motel.  It does not purport to 
serve as a symbol of defendant's establishment or services.  Nor does it in any way 
suggest to the traveling public that defe ndant's establishment is somehow connected 
with plaintiffs' establishment. 
Moreover, defendant has adapted its design and usage of "Border" so as not to 
confuse the traveling public.  First, "Bor der" modifies "Exit," a geographical term, 
rather than a service defendant provides.  S econd, the visual depiction of "Border" on 
defendant's billboards does not resemble the visual depiction of "Border" on any of 
plaintiffs' billboards.  Finally, prominently displayed on the left half of each of defendant's billboards is defendant's trad ename "Family Inns of America" and its 
logo.  Nothing in the record suggests that  defendant's use was anything other than a 
good-faith attempt to point travelers on I-95 in its direction, and § 1154(b)(4) permits 
defendant to do that without infringing upon plaintiffs' mark.
66  
Similarly, the court found that the use of "South of  Border" on the exit sign s also constituted fair 
use.67  
 121. Under the law of the United States, the defense of "comparative advertisi ng" is a form of the 
defense of fair use.  Comparative advertising is advertising that compares the relative qualities of 
competitive goods or services.  As long as a competitor's trademark is used fairly and in good faith and only to describe or make reference to the goods or  services of the trademark owner, such fair use 
in the form of comparative advertising will be av ailable as a defense.  This unauthorized use of a 
competitor's trademark can occur so long as the a dvertising does not contain misrepresentations or 
create a likelihood that purchasers will be confused as to source, identity, or sponsorship of the 
advertiser's product.   
Q81.  Please cite any authority for the propositi on that a Member must comply with a particular 
WTO obligation through a single measure applicable throughout its territory.  Is your claim concerning an "EC-wide" level of protection based on the fact that the EC's member States are also 
WTO Members?  AUS  
 Q82.  If the Panel were to uphold the compla inants' claims under Article 16.1 of the TRIPS 
Agreement, how would conclusions with respect to th e claims under Articles 1.1, 22.2, 24.5, 41.1, 
41.2, 41.3 and 42, and under Articles 10bis(1) and 10ter(1) of the Paris Convention (1967) provide 
an additional contribution to a pos itive solution to this dispute?  USA, AUS  
 
Response:  
 
122. Whether the Panel agrees or disagrees with the United States with resp ect to its Article 16.1 
claim, conclusions with respect to the other US clai ms – in particular the claim under Article 22.2 that 
legal means are not being made available to interest ed parties and the failure to provide enforcement 
procedures related to such means – would assist th e Parties in understanding the actions that the EC 
would need to take to bring its measure in to conformity with its WTO obligations.  
 
                                                     
 
66 Schafer Co. v. Innco Management Corp. , 797 F.Supp. at 481 (internal citations omitted). 
67 Schafer Co. v. Innco Management Corp. , 797 F.Supp. at 481, 482. WT/DS174/R/Add.1 
Page A-106  
 
 Q83.  If the Panel were to reject the compla inants' claims under Article 16.1 of the TRIPS 
Agreement, would there be any scope for it to uphold the claims under Articles 1.1, 22.2, 24.5, 41.1, 
41.2, 41.3 and 42, and under Articles 10bis(1) and 10ter(1) of the Paris Convention (1967)?  USA, 
AUS  
 
Response:  
 
123. Yes, the United States believes, for instance,  that whether or not the GI Regulation is 
inconsistent with the EC's obliga tions under Article 16.1, the EC mu st nevertheless provide the legal 
means under Article 22.2 for interested parties to prev ent the uses described in that Article, and must 
provide enforcement procedures with respect to those rights.  
 
Q84.  Are the procedures raised in the United  States' claims under Article 22.2 of the TRIPS 
Agreement governed by Part IV of the TRIPS Agreement?  If so, can they also be governed by Part II?  
USA  
 
Response:  
 
124. Article 22.2, in Part II of the TRIPS Agreem ent, requires that Members provide interested 
parties with the legal means to prevent certain uses, inter alia , of certain signs and indications.  If 
those means are not provided, and the United Stat es submits they are not, then there is an 
inconsistency with Article 22.2.  It  should be noted that fulfilling this obligation may or may not result 
in the acquisition or maintenance of intellectual property rights, e.g., in the case of the ability to object 
to a registration.    125. It may also be true that procedures for acqui ring and maintaining intellectual property, such as 
GIs, are inconsistent with Part IV, for instance, because, under Article 62.2 of the TRIPS Agreement, 
the registration process does not result in a registration being granted in a reasonable period of time.  But the United States is not raising any such claims under Part IV in this dispute.   126. It does not appear that a claim of inconsis tency would have to come within the scope of 
Part IV or of Part II, and cannot come within the scope of both.  Notably, Article 62.1, which permits 
Members to require compliance with reasonable procedures and formalities, provides that such 
procedures and formalities must be consistent with  the provisions of the TRIPS Agreement.  This 
language plainly envisions that a measure can viol ate both Article 62.1 and other provisions of the 
TRIPS Agreement, including those in Part II.    Q85.  Are the procedures rais ed in Australia's claims under Articles 41 and 42 of the TRIPS 
Agreement governed by Part IV of the TRIPS Agreem ent?  If so, can they also be governed by 
Part III?  AUS  
 Q86.  Article 4 the Paris Convention (1967) creates no right of priority for indications of source.  Does this indicate that they are irrelevant for the purposes of the right of priority?  AUS, EC  
 
Q87.  What is the significance of the EC's statement that the complainants' claims are 
"theoretical"?  Does the EC suggest that this a ffects the Panel's mandate or function in any way?  EC 
 Q88.  Please clarify the form of the recommendatio ns which Australia seeks in respect of versions 
of Regulation (EC) No. 2081/92 prior to its most re cent amendment, as distinct from registrations 
effected under them.  Please cite to the dis pute settlement rules and procedures of the covered 
agreements under which this form of recommendation is requested.  AUS  
  WT/DS174/R/Add.1 
 Page A-107 
 
 
 Q89.  Is there a notion of estoppel in WTO dispute settlement which applies where a Member 
refrains from raising claims in relation to a measure until after it is amended?  EC 
 Q90.  Does Australia challenge registrations of  geographical indications, or procedures leading up 
to such registrations or to refusal of such registr ations, that took place prior to 1 January 1996?  If 
so, please explain how Article 70 of the TRIPS Agreement applies to these measures.  AUS  
 Q91.  Please clarify the form of the recommendations  which Australia seeks in respect of individual 
registrations.  Please cite to the dispute settlement rules and pro cedures of the co vered agreements 
under which this form of recommendation is requested.  AUS  
 
Q92.  Does Australia seek relief in respect of existi ng individual registrations for reasons related to 
rights of objection?  How many such registrations were made under the former Article 17 of the 
Regulation?  How many under Article 6?  Does Austra lia seek relief in respect of any other aspect of 
procedures leading up to existing individual registrat ions?  Please cite to any previous GATT or WTO 
panel report which has made such a recommendati on.  Please explain why such a recommendation 
would be appropriate in this dispute if the Panel upheld Australia's claim.  AUS  
 Q93.  Does Australia seek relief in respect of indi vidual registrations in respect of their continuing 
inconsistency with trademark rights to be conferred  under Article 16.1 of the TRIPS Agreement?  If 
so, please list these individual registrations.  AUS  
 WT/DS174/R/Add.1 
Page A-108  
 
 QUESTIONS POSED BY THE EUROPEAN COMMUNITIES 
TO THE COMPLAINING PARTIES  
 
 
To Australia 
 
Question 1 
 Could you please give details of any case where th e authorities of the Member States have declared 
inadmissible an objection for the reasons alleged under Claim 21 (Australia's FWS, paras. 88-92) 
 
Question 2  Could you please give details of any application for the registration of a trademark that has been refused for the reasons alleged under Claim 24 (Australia's FWS, paras. 81-87).   
 
To the United States 
 
Question 3 
 The EC understands that the regulations of the US  Alcohol and Tobacco Ta x and Trade Board, and 
more specifically Section 27 CFR 4.39(i), provide fo r the co-existence of geographical indications for 
wine and some earlier trademarks, under certain conditions.   (a) Is this understanding correct?  
 (b) If so, how does the United States reconc ile this form of co-existence with the 
interpretation of Articles 16.1 and 24.5 of the TRIPS Agreement that it has put 
forward in this dispute?  
 
Response:  
 127. The United States notes that the US wine labeling regulations are not part of this Panel's terms 
of reference; indeed, this dispute involves neither US measures nor wine products.  With this caveat, 
under the regulations of the US Alcohol and Tobacco  Tax and Trade Bureau ("TTB"), TTB authorizes 
the use of the names of certain viticultural areas on wine labels.  However, there is nothing in this 
authorization that deprives the trademark owner of his right to pursue an infringement action against 
uses of that name that create a likelihood of confusion with respect to that trademark. See, e.g., 
Sociedad Anonima Vina Santa Rita v. US Dept. of the Treasury, 193 F.Supp.2d 6 (D.D.C. 2001) ("Of 
course, it is entirely possible or, indeed, likely that wineries will eventually produce labels bearing the 
Santa Rita Hills AVA designation.  If Plaintiff conc ludes that any of those labels infringes on its 
trademark, Plaintiff is fully entitled to bring suit  under the Lanham Act against the entity that has 
developed the label.  In other words, the ATF's a pproval of the Santa Rita Hills AVA does not affect 
Plaintiff's right to pursue trademark claims agains t individual wineries if and when those wineries use 
labels that infringe or dilute Plaintiff's mark.") (Exhibit US-48).  
To Australia 
 
Question 4  The EC understands that Australia's Wine and Br andy Corporation Act 19 80 (the "WBC Act") 
prohibits the use of a registered geographical indicati on for wine which does not originate in the area  WT/DS174/R/Add.1 
 Page A-109 
 
 
 covered by the geographical indication. The EC further understands that no exception to this 
prohibition is provided with respect to prior trademarks.   (a) Is this understanding correct?  
 (b) If so, how does Australia reconcile this prohibition on the use of earlier trademarks 
with the interpretation of Articles 16 and 24.5 of the TRIPS Agreement that it has advanced in this dispute? 
 Question 5 
 
The EC further understands that the Geographical Indications Committee set up by the WBC Act has announced that   The GIC will not determine a geographical i ndication where there is an exclusive trademark 
using the name which is the same or similar to the trademark, without the approval of the 
trademark owner. 
  (a) Is this policy still in place?   (b) What is the legal basis for this policy? Has the GIC the authority to derogate from 
the WBC Act? 
  (c) Does this policy apply also with th e respect to the registration of foreign 
geographical indications? 
 
 (d) If so, does it apply also when the tr ademark was registered after 1 January 1996 and 
after the date of protection of the geographical indication in the country of origin? 
  (e) If so, how does Australia reconcile this policy with the terms of Article 24.5 of the 
TRIPS Agreement?  
 
To Australia 
 
Question 6 
  (a) Are the registration and opposition pro cedures before Australia's Trade Mark Office 
"enforcement procedures" within the meaning  of Part III of the TRIPS Agreement?  
  (b) Is Australia's Trade Mark Office a "judicial body"?   (c) Are the registration and opposition pr ocedures before Australia's Trade Mark  Office 
"judicial procedures" within the meaning of Article 42 of the TRIPS Agreement? 
 
 (d) Does Australia's Trade Mark Office ha ve the authority to order the remedies 
provided in Articles 44, 45 and 46 of the TRIPS Agreement?  
 WT/DS174/R/Add.1 
Page A-110  
 
 To the United States 
 
Question 7 
  (a) Are the registration and opposition proce dures before the US Patent and Trademark 
Office ("PTO") "enforcement procedures" within the meaning of Part III of the TRIPS 
Agreement?  
  (b) Is the US PTO a "judicial body"?  
 (c) Are the registration and opposition procedures before the US PTO "judicial 
procedures" within the meaning of Article 42 of the TRIPS Agreement? 
  (d) Does the US PTO have the authority to ord er the remedies provided in Articles 44, 45 
and 46 of the TRIPS Agreement?  
 
Response:  
 
128. The United States fails to see the relevance of th ese questions to the dispute at hand.  Notably, 
none of the procedures or authorities of the USPTO  are included within this Panel's terms of 
reference.  Nevertheless, as explained at the first meeting, certain aspects of the procedures of the 
USPTO could be regarded as part of the enforcem ent procedures available to US rightholders who 
believe that they are likely to be damaged by the re gistration of a mark or the continued registration of 
a mark.  For instance, a petitioner who successfully cancels a registra tion at the USPTO can take the 
registration to a federal court to get an inj unction against infringing use.  Further, among the 
procedures available at the USPTO are proceedi ngs before administrative law judges and the 
Trademark Trial and Appeal Board ("TTAB"), which are quasi-judicial.   
 
To Australia and the United States 
 
Question 8 
 
 (a) Would it be possible under your domes tic law for an EC national who owns an 
Australia/US trademark to claim before the Australian/US courts that another trademark has been registered by Australia 's Trade Mark Office/ the US PTO in 
violation of Article 16.1 of the TRIPS Agreement, even where it is not contested that such registration is in conformity with a ll the relevant provisions of your domestic 
trademark law?  
 
Response:  
 
129. With the caveat that this Panel's terms of reference do not include US measures, any person 
likely to be damaged by the registration or continue d registration of a mark at the USPTO may request 
cancellation of the registration at the USPTO or in  a federal court and woul d cite grounds under US 
law for such a request.    
 (b) If not, is it your position that your domes tic law is inconsistent with Part III of the 
TRIPS Agreement, because it does not provide "j udicial civil procedures" in order to  
"enforce" Article 16.1?   
  WT/DS174/R/Add.1 
 Page A-111 
 
 
 Response:  
 
130. No, because where a trademark owner's rights are being infringed – where another person is 
using in commerce identical or similar signs for good s or services that are related to those in respect 
of which the trademark is registered in a manner th at creates a likelihood of confusion – the trademark 
owner can enjoin that infringement and obtain damages,  costs, and lost profits.  Further, a trademark 
owner with superior rights, either under common  law or in a prior registration, may obtain 
cancellation of a later registered trademark either through a federal court (where the true owner can 
also receive an injunction as well as damages) or through the USPTO.  This answer is provided with 
the caveat that this Panel's terms of reference do not include any US measures.   
 
To Australia 
 
Question 9 
 
The WBC Act set up a register of geographical indications.  While the WBC Act lays down the 
conditions and procedures for the registration of  Australian geographical indications, it does not 
appear to provide any conditions  or procedures for the registration of foreign geographical 
indications.   (a) Can foreign geographical indications be registered under the WCB Act? 
 
 (b) If so, what are the relevant conditions and procedures for the registration of foreign 
geographical indications? 
  (c) Has any foreign geographical indicatio n been registered under the WCB Act, other 
than those registered pursuant to a bilateral agreement?  
 
To Australia and the United States 
 
Question 10 
 
Have Australia and the United States ever been requested to transmit an application for the 
registration, under Regulation 2081/92, of a geogra phical indication relating to an area located in 
their territory? If yes, what action have they taken?  
 
Response:  
 
131. Please see the US response to Panel questions 12 and 36.  
Question 11 
 Have Australia and the United States ever been request ed to transmit a statement of objection to the 
registration, under Regulation 2081/ 92, of a geographical indicati on? If yes, what action have they 
taken?  
 
Response:  
 132. Please see the US response to Panel questions 12 and 36. 
 WT/DS174/R/Add.1 
Page A-112  
 
 To the United States 
 
Question 12 
 How many US geographical indications for produc ts falling under the scope of Regulation 2081/92 
are protected in the United States?  
 
Response:  
 
133. The United States is unclear as to the relevance of this question.  If the EC is implying that 
there are no geographical indications in the United St ates that would fall within the scope of the GI 
Regulation, on what basis does the EC make this implication?  
To Australia 
 
Question 13  How many Australian geographical indications  for products falling under the scope of 
Regulation 2081/92 are protected in Australia?