WT/DS290/R/Add.1 
 Page A-1 
 
 
 ANNEX A 
 
SUBMISSIONS BY AUSTRALIA 
 
 
Contents Page 
Annex A-1 Australia's Response to the European Communities' Request for a 
Preliminary Ruling (15 March 2004) 
 A-2 
Annex A-2 First Written Submission of Australia (23 April 2004) 
 A-14 
Annex A-3 Oral Statement of Aust ralia – First Substantive Meeting 
(23 June 2004) 
 A-81 
Annex A-4 Replies by Australia to Questions posed by the Panel and the 
European Communities to the Complaining Parties following the 
First Substantive Meeting (8 July 2004) 
 A-87 
Annex A-5 Written Rebuttal Submissi on of Australia (22 July 2004) 
 A-117 
Annex A-6 Opening Statement of Aust ralia – Second Substantive Meeting 
(11 August 2004) 
 A-166 
Annex A-7 Closing Statement of Aust ralia – Second Substantive Meeting 
(12 August 2004) 
 A-183 
Annex A-8 Replies by Australia to Questions posed by the Panel following the 
Second Substantive Meeting (26 August 2004) 
 A-185 
Annex A-9 Comments of Australia on th e European Communities' Replies to 
Questions posed by the Panel and to Questions posed by Australia 
following the Second Substantive Meeting (2 September 2004) 
 A-216 
Annex A-10 Comments of Australia on the Reply of the International Bureau of 
WIPO to the Panel's Letter of 9 July 2004 (28 September 2004) 
 A-230 
 WT/DS290/R/Add.1 
Page A-2  
 
 ANNEX A-1 
 
COMMENTS BY AUSTRALIA 
ON THE REQUEST BY THE EUROPEAN COMMUNITIES 
FOR A PRELIMINARY RULING REGARDING 
THE PANEL'S JURISDICTION UN DER ARTICLE 6.2 OF THE DSU 
 
(15 March 2004) 
  
TABLE OF CONTENTS 
 
I. INTRODUCTION ................................................................................................................... ............4  
II. THE REQUIREMENTS OF DSU ARTICLE 6.2.............................................................................4  
III. AUSTRALIA'S PANEL REQUEST IDENTI FIES THE "SPECIFIC MEASURE AT 
ISSUE" AS REQUIRED BY DSU ARTICLE 6.2 ............................................................................5  
A. REGULATION NO. 2081/92.............................................................................................................5  
B. ANY AMENDMENTS TO REGULATION NO. 2081/92 ........................................................................6  
C. RELATED IMPLEMENTING AND ENFORCEMENT MEASURES .............................................................7  
D. CONCLUSION ............................................................................................................................... ..7 
IV. AUSTRALIA'S PANEL REQUEST PROVID ES "A BRIEF SUMMARY OF THE 
LEGAL BASIS OF THE COMPLAINT SU FFICIENT TO PRESENT THE PROBLEM 
CLEARLY" AS REQUIRED BY DSU ARTICLE 6.2.....................................................................8  
A. THE LEGAL BASES OF AUSTRALIA 'S CLAIMS ARE CLEAR ................................................................8  
B. AUSTRALIA 'S CLAIMS SATISFY THE LEGAL STANDARD ESTABLISHED BY DSU  ARTICLE 6.2..........9  
C. DSU  ARTICLE 6.2 DOES NOT REQUIRE A COMPLAINING PARTY TO INCLUDE A SUMMARY OF 
ITS LEGAL ARGUMENT IN ITS PANEL ESTABLISHMENT REQUEST ...................................................10  
V. THE EC HAS NOT SUFFERED SERIOUS PREJUDICE TO ITS ABILITY TO 
DEFEND ITSELF.................................................................................................................. ............10  
VI. THE EC'S REQUEST FOR A PRELIMINARY RULING...........................................................12  
VII. THE PANEL SHOULD FIND THAT AUST RALIA'S PANEL REQUEST COMPLIES 
WITH DSU ARTICLE 6.2........................................................................................................... .....12  
  WT/DS290/R/Add.1 
 Page A-3 
 
 
 TABLE OF CASES REFERRED TO IN THIS REQUEST  
 
Short Title Full Title  
US – Carbon Steel  United States – Countervailing Duties on Certain Corrosion-Resistant Carbon Steel 
Flat Products from Germany , Report of the Appellate Body, WT/DS213/AB/R.   
EC – Bananas  European Communities – Regime for the Importation, Sale and Distribution of 
Bananas , Report of the Appellate Body, WT/DS27/AB/R.   
Guatemala – Cement I  Guatemala – Anti-Dumping In vestigation Regarding Portland Cement from Mexico , 
Report of the Appellate Body, WT/DS60/AB/R.   
Korea – Dairy  Korea – Definitive Safeguard Measure on Imports of Certain Dairy Products , 
Report of the Appellate Body, WT/DS98/AB/R.   
Thailand – H-Beams  Thailand – Anti-Dumping Duties on Angles, Shapes and Sections of Iron or Non-
Alloy Steel and H-Beams from Poland , Report of the Appellate Body, 
WT/DS122/AB/R.   
Canada – Wheat  Canada – Measures Relating to Exports of Wheat and Treatment of Imported 
Grain , Preliminary Ruling of the Panel, WT/DS276/12.   WT/DS290/R/Add.1 
Page A-4  
 
 I. INTRODUCTION 
1. The EC has requested that the Panel issue a pr eliminary ruling that Australia's request for the 
establishment of a panel does not meet the requirements of Article 6.2 of the Understanding on the 
Rules and Procedures Governing the Settlement of Disputes  (the "DSU").  Arguments put forward by 
the EC in support of its request are without merit.   Australia has explicitly identified the specific 
measure at issue and provided a brief summary of th e legal basis of the complaint sufficient to present 
the problem clearly.  Consequently, Australia's request  for the establishment of a panel in this dispute 
fully complies with the requirements of DSU Article 6. 2.  Australia submits that, in the circumstances 
of this dispute, the EC is effectively asking the Panel to find that DSU Article 6.2 requires a 
complaining party to provide a summary of its le gal argument in its panel establishment request.  
Such a finding would not be consistent with the te rms of DSU Article 6.2 being given their ordinary 
meaning in light of the object and purpose of the DSU.    
II. THE REQUIREMENTS OF DSU ARTICLE 6.2 
2. DSU Article 6.2 requires, in relevant part, that the request for the establishment of a panel 
"identify the specific measures at issue and provi de a brief summary of the legal basis of the 
complaint sufficient to present the problem clearly".    3. In US – Carbon Steel , the Appellate Body recapped and cl arified its previous findings in 
relation to DSU Article 6.2.  The Appellate Body said in that dispute:    
125. There are … two distinct requirements, namely identification of the specific 
measures at issue , and the provision of a brief summary of the legal basis of the 
complaint  (or the claims ).  Together, they comprise the "matter referred to the DSB", 
which forms the basis for a panel's term s of reference under Article 7.1 of the 
DSU.
[…]   
126. The requirements of precision in the request for the establishment of a panel 
flow from the two essential purposes of the terms of reference.  First, the terms of reference define the scope of the dispute.  Secondly, the terms of reference, and the 
request for the establishment of a panel on which they are based, serve the due 
process  objective of notifying the parties and third parties of the nature of a 
complainant's case.
[…]  When faced with an issue relating to the scope of its terms of 
reference, a panel must scrutinize carefully  the request for establishment of a panel 
"to ensure its compliance with both the letter and the spirit of Article 6.2 of the DSU".
[…]   
127. …  [C]ompliance with the requirements of Article 6.2 must be demonstrated 
on the face of the request for the establishment  of a panel.  Defects in the request for 
the establishment of a panel cannot be "cured " in the subsequent submissions of the 
parties during the panel proceedings.[…]  Nevertheless, in considering the sufficiency 
of a panel request, submissions and statem ents made during the course of the panel 
proceedings, in particular the first written submission of the complaining party, may 
be consulted in order to confirm the meani ng of the words used in the panel request 
and as part of the assessment of whether the ability of the responde nt to defend itself 
was prejudiced.[…]  Moreover, compliance with the requirements of Article 6.2 must 
be determined on the merits of each case, having considered the panel request as a whole, and in the light of attendant circumstances.
[…]   
…    WT/DS290/R/Add.1 
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 130. …  [A]lthough the listing of treaty provis ions allegedly violated is always a 
necessary  "minimum prerequisite" for compliance with Article 6.2, whether such a 
listing is sufficient  to constitute a "brief summary of  the legal basis of the complaint 
sufficient to present the problem clearly" within the meaning of Article 6.2 will depend on the circumstances of each case, and in particular on the extent to which 
mere reference to a treaty provision sheds light on the nature of the obligation at 
issue.
[…]  …1  (emphases in original)    
4. Notwithstanding that the EC has cited several potentially relevant statements by the Appellate 
Body from EC – Bananas , Guatemala – Cement I , Korea – Dairy , Thailand – H-Beams  and US – 
Carbon Steel ,2 the EC's choice of Appellate Body statements is selective.  In particular, nowhere in its 
submission does the EC cite the full text of the A ppellate Body's statement at paragraph 127, or the 
statement at paragraph 130, of US – Carbon Steel .   
 5. The relevant requirements for compliance are encapsulated in the statement by the Appellate 
Body:  "… compliance with the requirements of Arti cle 6.2 must be demonstrated on the face of the 
request for the establishment of a panel.  …  [C]o mpliance … must be determined on the merits of 
each case , having considered the panel request as a whole , and in the light of attendant 
circumstances "3 (emphasis added) .   
 
III. AUSTRALIA'S PANEL REQUEST IDENTIFIES THE "SPECIFIC MEASURE AT 
ISSUE" AS REQUIRED BY DSU ARTICLE 6.2 
6. DSU Article 6.2 requires that the request fo r establishment of a panel "identify the specific 
measures at issue".  The Panel in Canada – Wheat  has stated that the ordinary meaning of the phrase 
"identify the specific measures at issue" is "to est ablish the identity of the precise measures at issue".4   
 7. Australia's panel establishment request establish es the identity of the precise measure at issue 
in this dispute, and therefore conforms to the re quirements of DSU Article 6.2.  As set out in the 
fourth paragraph of Australia's request, the specific measure at issue is composed of three principal 
elements:  (1) Council Regulation No. 2081/92 itself;  (2) any amendments to that Regulation;  and (3) related implementing and enforcement measures.  That all three elements constitute the specific 
measure at issue is confirmed by the second sentence in  that paragraph:  "[t]he EC measure lays down 
and
 implements rules on the protection of designati ons of origin and geographical indications for 
agricultural products and foodstuffs, excluding wines a nd spirits".  This statement is in fact an 
adaptation of Article 1.1 of Regulation No. 2081/92, a copy of the current version of which has been 
provided by the EC as Exhibit EC-1.    A. R
EGULATION NO. 2081/92 
8. Australia agrees that what can be consid ered a "specific measure" will depend on the 
circumstances of the particular case, and in pa rticular on the characteristics of the measure in 
question.5   
 9. Here, a legislative instrument establishes an  integrated regulatory framework to govern a 
defined package of issues.  Thus, nomination of that instrument alone is in this dispute sufficient to 
establish the identity of the specifi c measure at issue within the meaning of DSU Article 6.2 and to 
                                                     
 
1 US – Carbon Steel , paragraphs 125-130.   
2 EC Request for a Preliminary Ruling, paragraphs 7-13.   
3 US – Carbon Steel , paragraph 127.   
4 Canada – Wheat , paragraph 14.   
5 EC Request for a Preliminary Ruling, paragraph 17.   WT/DS290/R/Add.1 
Page A-6  
 
 encompass all of the provisions of that legislative in strument within the scope of the specific measure 
at issue.  The complexity of a legislative in strument does not preclude the nomination of that 
instrument as such or of the regime which it gove rns as the specific measure at issue within the 
meaning of DSU Article 6.2.  Indeed, the EC it self acknowledges that "name, number, or date of 
adoption of the act" can identify th e "specific measure at issue".
6   
 
10. Regulation No. 2081/92 is not a circumstance wh ere identifying a legislative instrument is not 
sufficient.  It is not a "miscellaneous issues" legislative instrument covering a broad range of 
activities.  Neither is it a legislative instrument establishing a regulatory framework governing a range 
of measures intended to be applied in the context of  a broad spectrum of activities.  If it established a 
comprehensive tax regime, for example, it is possible that a complaining party's failure to identify the 
specific provision(s) could legitimately be said in  some circumstances not to establish the precise 
identity of the measure at issue.  11. The EC itself does not seem to have consid ered that DSU Article 6.2 requires explicit 
linkages between the detailed provisions of the m easure(s) at issue and the provisions of the WTO 
Agreement in its own panel establishment requests.   For example, the EC's panel requests in US – 
Anti-Dumping Act of 1916
7, US – FSC8, Indonesia – Autos9 and Canada – Autos10 did not make such 
linkages.    12. The EC argues that "[t]he unspecific refere nce to ‘Regulation 2081/92' made in the Panel 
requests does not permit the EC to understand which specific aspects among those covered by 
Regulation 2081/92 the complainants intend to ra ise in the context of the present proceedings".
11  
However, to apply DSU Article 6.2 in a way th at requires explicit linkages between the detailed 
provisions of the measure at issue and the provisi ons of the WTO Agreement in a panel establishment 
request could have a range of immediate potential effects.  It could preclude claims based on the 
general design and architecture of a measure, such as national treatment claims based on arguments of 
systemic bias.  Complaining parties could be requi red to provide a summary of their legal arguments 
in the panel establishment request in the even t of a claim based on a measure's design and 
architecture, and possibly in respect of other clai ms, else the linkages could be argued not to have 
been sufficiently identified.  More over, in such a case, a failure to  identify even one provision of the 
measure in the panel establishment request coul d void the panel's mandate, an outcome which 
Australia considers would be totally at odds with th e intent of the DSU generally and of Article 6.2 in 
particular.  The EC's argument is not sustainabl e given that DSU Article 6.2 requires that panel 
establishment request provide a "brief summary of the legal basis of the complaint sufficient to 
present the problem clearly", not  a summary of the legal argument.   
 
B. ANY AMENDMENTS TO REGULATION NO. 2081/92 
13. As the EC has not challenged the inclusion of amendments to Regulation No. 2081/92 in the 
specific measure at issue, Australia assumes the EC  does not dispute that they form part of the 
specific measure at issue.   
                                                      
6 EC Request for a Preliminary Ruling, paragraph 17.   
7 United States – Anti-Dumping Act of 1916 , Request for the Establishment of a Panel by the European 
Communities, WT/DS136/2.   
8 United States – Tax Treatment for "Foreign Sales Corporations" , Request for the Establishment of a 
Panel by the European Communities, WT/DS108/2.   
9 Indonesia – Certain Measures Affecting the Automobile Industry , Request for the Establishment of a 
Panel by the European Communities, WT/DS54/6.   
10 Canada – Certain Measures Affecting the Automotive Industry , Request for the Establishment of a 
Panel by the European Communities, WT/DS142/2.   
11 EC Request for a Preliminary Ruling, paragraph 22.    WT/DS290/R/Add.1 
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C. RELATED IMPLEMENTING AND ENFORCEMENT MEASURES  
14. Read in context, the phrase "related implemen ting and enforcement measures" is specific.  It 
clearly and precisely identifies actions connected to the implementation and enforcement of Regulation No. 2081/92 as being part of the measure at issue in this dispute.   
 
15. The phrase brings within the scope of this  dispute any actions – whether regulatory, 
administrative or judicial – for which Regulation No . 2081/92 constitutes the legislative basis, that is, 
any measures which are applied within the legal framework of Regulation No. 2081/92.  The EC's 
isolated analysis of the word "related" is misleading.
12  As the EC itself concedes,13 the phrase 
"enforcement and implementing measures" narrows the measures at issue to those that implement 
and/or enforce Regulation No. 2081/92.    16. Neither DSU Article 6.2 – nor any other provisi on of the DSU – limits the number of actions 
that may constitute the measure(s) at issue.  The fact that there are by now 640 geographical 
indications or designations of origin  registered under Regulation No. 2081/92,
14 or that 
implementation and enforcement may occur through a mix of legislative or administrative means at 
Community and Member State level or for some aspects through judicial review,15 does not preclude 
those actions forming part of the specific measure at issue in this dispute.    17. By arguing that the phrase "related implemen ting and enforcement measures", read in the 
context of Australia's panel establishment request in th is dispute, is not sufficiently specific, the EC is 
effectively asking the Panel to find that DSU Article  6.2 requires a complaining party:  to provide a 
"statement of available evidence" in the sense of Articles 4.2 and 7.2 of the Agreement on Subsidies 
and Countervailing Measures ;  to provide a list of exhibits;  and/or to inform the EC – through the 
panel establishment request – whether Australia is  intending to pursue le gal argument based on all 
elements of the measure.  DSU Article 6.2 requires none of these things.   
 18. Australia notes that the EC itself has on a number of occasions considered that similar language was sufficiently specific to identify the pr ecise measures at issue, for example, "any other 
implementing measures",
16 "other relevant documents",17 "any implementing measures thereof and all 
other related measures",18 "any implementing decrees and other regulations",19 and "any 
implementing measures taken thereunder".20  
 D. C
ONCLUSION  
19. The specific measure at issue is composed of Council Regulation No. 2081/92, any 
amendments to that Regulation, and related im plementing and enforcement measures.  Australia 
                                                      
12 EC Request for a Preliminary Ruling, paragraph 28.   
13 EC Request for a Preliminary Ruling, paragraphs 29-32.   
14 EC Request for a Preliminary Ruling, paragraph 32.   
15 EC Request for a Preliminary Ruling, paragraph 30.   
16 Canada – Certain Measures Affecting the Automotive Industry , Request for the Establishment of a 
Panel by the European Communities, WT/DS142/2.   
17 United States – Definitive Safeguard Measures on Imports of Certain Steel Products , Request for the 
Establishment of a Panel by the European Communities, WT/DS248/12.   
18 United States – Tariff Increases on Products from the European Communities , Request for the 
Establishment of a Panel by the European Communities, WT/DS39/2.   
19 Korea – Measures Affecting Trade in Commercial Vessels , Request for the Establishment of a Panel 
by the European Communities, WT/DS273/2.   
20 Indonesia – Certain Measures Affecting the Automobile Industry , Request for the Establishment of a 
Panel by the European Communities, WT/DS54/6.   WT/DS290/R/Add.1 
Page A-8  
 
 submits that EC arguments that Australia's identif ication of the specific measure at issue in this 
dispute is insufficiently specific are without merit and do not provide a basis for a finding by the Panel that Australia has not identifie d the specific measure at issue.   
 
IV. AUSTRALIA'S PANEL REQUEST PROVIDES "A BRIEF SUMMARY OF THE 
LEGAL BASIS OF THE COMPLAINT SUFFICIENT TO PRESENT THE PROBLEM 
CLEARLY" AS REQUIRED BY DSU ARTICLE 6.2 
20. The Appellate Body has said:   
 
… whether … a listing [of treaty provisions allegedly violated]  is sufficient to 
constitute a "brief summary of the legal basi s of the complaint sufficient to present 
the problem clearly" within the meaning of Article 6.2 will depend on the circumstances of each case, and in particular ly on the extent to which mere reference 
to a treaty provision sheds light on th e nature of the obligation at issue.
[…]  …21   
21. The EC has characterised this and other relevant Appellate Body statements as "the 
identification of the treaty provisions alleged to have  been violated is a necess ary, but not a sufficient 
condition  under Article 6.2 DSU"22 (emphasis in original) .  This is not an accurate characterisation of 
the relevant Appellate Body statements because it suggests that such identification is always 
insufficient.  In fact, as the above quotation dem onstrates, the Appellate Body has said that whether 
such identification is sufficient will depe nd on the circumstances of the case.   
 
22. The issue before the Panel is whether Aust ralia's request for the establishment of a panel 
provides "a brief summary of the legal basis  of the complaint sufficient to present the problem 
clearly" as required by DSU Article 6.2.  "Basis" is defined as "the foundation" and "[a] thing on 
which anything is constructed a nd by which its constitution or operation is determined;  … a 
determining principle;  a set of underlying or agreed principles".23  Thus, DSU Article 6.2 requires 
that a request for the establishment of a panel set out the legal principles that underpin the complaint 
sufficient to present the problem clearly.    23. The six claims set out in Australia's panel establishment request provide a brief summary of 
the legal basis of the complaint sufficient to presen t the problem clearly.  Notwithstanding that those 
claims might restate the essential elements of the relevant provisions of the WTO Agreement, that 
reference is sufficient in this dispute to shed light on the nature of the obligations at issue in relation to 
the specific measure at issue.    A. T
HE LEGAL BASES OF AUSTRALIA 'S CLAIMS ARE CLEAR  
24. The EC alleges that Australia's use of the term "and/or" makes unclear the legal bases of 
Australia's claim in relation to Articles 41 and 42 of the TRIPS Agreement .  The expression "and/or" 
in fact applies to all of the provisions cited.  This is not idiomatic Australian linguistic usage.  
Australia notes, for example, the usage of "and/or" in  the context of three or more options in a number 
of WTO panel and Appellate Body reports.24  Thus, consistent with common linguistic usage of the 
                                                      
21 US – Carbon Steel , paragraph 130.   
22 EC Request for a Preliminary Ruling, paragraph 37.   
23 The New Shorter Oxford English Dictionary , Ed Lesley Brown, Clarendon Press, Oxford, 1993, 
Vol. 1, page 188.   
24 For example:  EC – Measures Affecting Asbestos and Asbestos-Containing Products , Report of the 
Panel, WT/DS135/R, paragraph 3.83;  Argentina – Safeguard Measures on Imports of Footwear , Report of the 
Panel, WT/DS121/R, paragraph 8.298;  Argentina – Measures Affecting the Export of Bovine Hides and the 
Import of Finished Leather , Report of the Panel, WT/DS155/R, paragraphs 2.43, 8.138 and 11.6;  Canada –  WT/DS290/R/Add.1 
 Page A-9 
 
 
 expression "and/or", Australia's claim is that the EC measure diminishes, or lessens, the legal 
protection for trademarks under the TRIPS Agreement , contrary to the provisions cited, considered 
individually and collectively.25  The use of the expression "and/or" , understood in its common usage, 
does not make the legal bases of Australia's claim unclear.    
25. The EC also alleges that the legal bases of  Australia's claim in relation to Articles 10, 10 bis 
and 10 ter of the Paris Convention, in conjunction with Article 2 of the TRIPS Agreement , are 
unclear.
26  The EC argues that these provisions of the Paris Convention are complex, being divided 
into various subparagraphs  and imposing numerous distinct obligations.  Irrespective of the accuracy 
of the EC's portrayal of those provisions, Australia's claim is that the EC measure diminishes the legal 
protection for trademarks under the TRIPS Agreement , contrary to the cited provisions.  Thus, 
Australia's claim is that the EC  measure diminishes the legal protection for trademarks under the 
TRIPS Agreement , contrary to all  aspects of those cited provisions .  The EC has not offered any 
argument as to why this can not or should not  be clearly understood from the claim.   
 
B. AUSTRALIA 'S CLAIMS SATISFY THE LEGAL STANDARD ESTABLISHED BY DSU  ARTICLE 6.2 
26. The EC seems to be alleging in relation to Australia's claim concerning the legal protection 
for trademarks under the TRIPS Agreement  that Australia has not provided "a meaningful description 
of the claim".27  However, DSU Article 6.2 does not require such a description:  it requires a "brief 
summary of the legal basis of the complaint suffi cient to present the problem clearly".  In the 
circumstances of the present dispute, Australia's  statement that the EC measure diminishes the 
protection for trademarks under the TRIPS Agreement  contrary to the cited provisions meets this 
requirement.  Australia has clearly set out the lega l principle underpinning its claim as required by 
DSU Article 6.2.     27. Similarly, DSU Article 6.2 does not require Australia to set out in its panel establishment 
request precisely how
 it believes the EC measure violates fundamental national treatment and most 
favoured nation principles under GATT 1994, the TRIPS Agreement  and the TBT Agreement .28  The 
obligation on Australia is to provide a brief summary of  the legal basis, or the legal principles, of the 
complaint sufficient to present the problem clearly, wh ich Australia has done.  It is not credible that 
the language used in Australia's panel establishm ent request does not provide to the EC a brief 
summary of the fundamental principles of national treatment and most favoured nation sufficient to 
present the problem clearly.   
 28. Equally, DSU Article 6.2 does not require Au stralia to set out in its panel establishment 
request precisely how
 it believes the EC measure has been prep ared, adopted and/or applied with the 
effect of creating unnecessary obstacles to trade contrary to Article 2.2 of the TBT Agreement .29  
Australia notes, however, that the EC is also effec tively alleging that Australia has provided too much 
information because Australia has informed the EC  of its intention to demonstrate that the EC 
measure is inconsistent with pr ovisions of the TBT Agreement. 30  Whether Point 1 of Annex 1 to the 
                                                                                                                                                                     
Certain Measures Affecting the Automotive Industry , Report of the Panel, WT/DS139/R, WT/DS142/R, 
paragraph 6.1022;  EC – Anti-Dumping Duties on Malleable Cast Iron Tube or Pipe Fittings from Brazil , 
Report of the Panel, WT/DS219/R, paragraph 7.335;  and US – Definitive Safeguard Measures on Imports of 
Certain Steel Products , Report of the Appellate Body, WT/DS248/AB/R & others, paragraph 484.   
25 Australia notes that the EC seems to have understood the usage of the expression "and/or" in relation 
to Australia's claims under Article 2 of the TBT Agreement .   
26 EC Request for a Preliminary Ruling, paragraph 58.   
27 EC Request for a Preliminary Ruling, paragraph 61, referring to paragraphs 46-48.   
28 EC Request for a Preliminary Ruling, paragraph 61, referring to paragraphs 44-45, and 
paragraphs 62-64.   
29 EC Request for a Preliminary Ruling, paragraph 62.   
30 EC Request for a Preliminary Ruling, paragraph 63.   WT/DS290/R/Add.1 
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 TBT Agreement  "impose [s] any obligations which could have been violated by the EC"
 31 will of 
course be for the Panel to determine as part of its consideration of the substantive aspects of the 
dispute in response to arguments put forward by Australia and the EC.    29. In relation to Australia's claims under TRIPS Articles 22.2
32, and 63.1 and 63.333, Australia 
notes that the EC does not allege that it is unable to  comprehend the legal basis of the complaint, that 
is, the legal principles at issue in the claims, from the information provided.  Rather, it alleges that 
"the claim is not comprehensible",34 and "Australia fails to explain in which way Regulation 2081/92 
is not applied in a transparent way".35  DSU Article 6.2 requires that Australia's panel establishment 
request "provide a brief summary of the legal basis of the complaint  sufficient to present the problem 
clearly".  This Australia has done.   
 C. DSU
 ARTICLE 6.2 DOES NOT REQUIRE A COMPLAINING PARTY TO INCLUDE A SUMMARY OF 
ITS LEGAL ARGUMENT IN ITS PANEL ESTABLISHMENT REQUEST  
30. The EC has put forward many arguments in s upport of its Request for a Preliminary Ruling.  
In every case, however, the conclusion seems inescapab le that these arguments are motivated by the 
EC's desire to have the Panel find that DSU Artic le 6.2 requires that a complaining party provide a 
summary of its legal argument in its panel establishment request.    31. DSU Article 6.2 requires that a complaining party provide a "brief summary of the legal basis of the complaint sufficient to present the problem clearly".  This was confirmed by the Appellate 
Body when it said:  "Article 6.2 of the DSU requires that the claims , but not the arguments , must all 
be specified sufficiently in the re quest for the establishment of a panel in order to allow the defending 
party and any third parties to know the legal basis of the complaint" (emphasis in original) .
36   
 32. Australia submits that it has met its obligati ons under DSU Article 6.2.  EC arguments that 
Australia's panel request does not provide "a brie f summary of the legal basis of the complaint 
sufficient to present the problem clearly" are wit hout merit and do not provide a basis for such a 
finding by the Panel.    
V. THE EC HAS NOT SUFFERED SERIOUS PREJUDICE TO ITS ABILITY TO 
DEFEND ITSELF 
33. Australia's request for the establishment of a panel fully complies with the requirements of 
DSU Article 6.2:  it identifies the specific measures at issue and provides a brief summary of the legal 
basis of the complaint sufficient to present the problem clearly.    34. However, in the event the Panel considers that DSU Article 6.2 technically requires more 
information than is provided in Australia's panel establishment request, the Panel would also need to 
consider if it should address whether the EC's ability  to defend its interests has been prejudiced.   
 35. Should the Panel decide to examine whether th e EC's ability to defend its interests has been 
prejudiced, Australia recalls that in Korea – Dairy  the Appellate Body said:   
 
                                                     
 
31 Ibid.   
32 EC Request for a Preliminary Ruling, para graph 61, referring to paragraph 49.   
33 EC Request for a Preliminary Ruling, para graph 61, referring to paragraph 51.   
34 EC Request for a Preliminary Ruling, paragraph 49.   
35 EC Request for a Preliminary Ruling, paragraph 61.   
36 EC – Bananas , paragraph 143.    WT/DS290/R/Add.1 
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 … we consider that whether the mere listing of the articles claimed to have been 
violated meets the standard of Article 6. 2 must be examined on a case-by-case basis.  
In resolving that question, we take into  account whether the ability of the respondent 
to defend itself was prejudiced, given the actual course of the panel proceedings, by the fact that the panel request simply lis ted the provisions claimed to have been 
violated.   
…   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 a nd 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.
37   
36. The EC alleges that Australia has prevented the EC from preparing its defence in a timely 
manner, thereby causing serious prejudice to the EC.38   
 37. The EC argues that it is prejudiced by an allege d lack of clarity in Australia's request for the 
establishment of a panel.  "As a defending party, the EC has a right to know
 what the case  is which it 
will have to defend.  This information must be contained in the Panel request " and "… the ambiguity 
of the Panel request is such that the EC is … not sure of the case  which the United States and 
Australia are bringing before the Panel.  As a consequence, the EC has been seriously hampered  in its 
efforts to prepare  its defence" 39 (emphases added) .   
 
38. The EC's argument is premised in part on statements by the Appellate Body in Thailand – 
H-Beams  when the Appellate Body said in relevant part:  "Article 6.2 of the DSU calls for sufficient 
clarity with respect to the legal b asis of the complaint, that is, with  respect to the ‘claims' that are 
being asserted by the complaining party.[…]  A defending party is entitled to know what case it has to 
answer, and what violations have been allege d so that it can begin preparing its defence.[…]  …"40   
 
39. However, the EC argument overlooks that the Appellate Body clarified those statements in its 
later report in US – Carbon Steel  when it said that "the terms of reference, and the request for the 
establishment of a panel on which they are based , serve the due process objective of notifying the 
parties and third parties of the nature  of a complainant's case" 41 (emphasis added) .   
 
40. Further, and in any event, in Thailand – H-Beams , the Appellate Body referred to a 
responding party " [beginning  to prepare]  its defence"42 (emphasis added) .  A request for 
establishment of a panel pursuant to DSU Article 6.2 does not provide the basis for a responding party's preparation
 of its defence, as the EC asserts.  Ind eed, such an interpretation would render 
                                                      
37 Korea –Dairy , paragraphs 127-131.   
38 EC Request for a Preliminary Ruling, paragraph 74.   
39 EC Request for a Preliminary Ruling, paragraphs 67-68.   
40 Thailand – Anti-Dumping Duties on Angles, shapes and Sections of Iron or Non-Alloy Steel and H-
Beams from Poland , Report of the Appellate Body, WT/DS122/AB/R, paragraph 88.   
41 US – Carbon Steel , paragraph 126.   
42 Thailand – H-Beams , paragraph 88.   WT/DS290/R/Add.1 
Page A-12  
 
 meaningless the provisions of the DSU, for example,  Article 12.4, concerning written submissions in 
panel proceedings.  The EC will have the opportunity  to present its defence in its written and oral 
presentations to the Panel, for which it has b een granted the maximum three week period of 
preparation time envisaged under the Working Proce dures at Appendix 3 to the DSU.  Moreover, the 
EC implicitly admits when it subsequently says "…  the EC cannot be expected to wait for the first 
written submission of the complainants to start
 preparing its defence"43 (emphasis added)  that DSU 
Article 6.2 does not provide the basis for a responding party's preparation  of its defence.   
 41. Accordingly, DSU Article 6.2 does not bestow on a responding party "a right to know what the case is which it will have to defe nd" or provide that "[t]his inform ation must be contained in the 
Panel request".
44  Nor has the Appellate Body suggested that  DSU Article 6.2 provides such a right or 
sets out such a requirement.  The EC has had all the information that DSU Article 6.2 provides that it 
should have to begin preparing its defence, and has had this information since Australia's initial panel 
establishment request.  As a consequence, the EC's ar gument that it is prejudiced by the lack of clarity 
in Australia's panel request is not sustainable.   
 
42. The EC also argues that the alleged lack of  clarity in Australia's panel request is not 
acceptable from the point of view of the EC's rights of due process.  However, the issue for the Panel 
is whether Australia's panel establishment request  complies with DSU Article 6.2.  There is no 
requirement for the Panel to consider whether DSU Article 6.2 in itself provides adequate due process 
rights to a responding party.   
 
43. Australia notes too the EC's statement at footnote 25 of its Request that "[t]he EC does consider it necessary, in the present case, to take a position as to whether the requirement of prejudice 
in Article 6.2 DSU constitutes an additional requir ement to those set out in Article 6.2 DSU".  
Australia submits that, since Australia's panel establishment request fully complies with the 
requirements of DSU Article 6.2, the EC has not been prejudiced as a defendant.  There is thus no 
need for the Panel to consider this  issue in the context of this dispute.  Should, however, the Panel 
consider it necessary to consider the issue, Australia  reserves the right to put forward further argument 
on this issue in its First Written Submission.    44. In conclusion, the EC is clearly aware of the specific measure at issue in this dispute and the 
legal basis of the complaint.  Australia submits th at the EC's allegation that Australia has prevented 
the EC from preparing its defence in a timely manner, thereby causing serious prejudice to the EC, is without foundation.    
VI. THE EC'S REQUEST FOR A PRELIMINARY RULING  
45. As the Panel has indicated its intention to i ssue a preliminary ruling in response to the EC's 
Request, Australia does not offer any comment on proce dural issues associated with the EC's Request.   
 
VII. THE PANEL SHOULD FIND THAT AUSTRALIA'S PANEL REQUEST COMPLIES 
WITH DSU ARTICLE 6.2 
46. EC arguments in support of its Request for a Preliminary Ruling that Australia's request for 
the establishment of a panel does not meet the requir ements of DSU Article 6.2 are without merit.  
Australia's panel establishment request in this dispute fully satisfies the requirements of DSU 
Article 6.2 as these have been clarified by the Appellate Body, most recently in US – Carbon Steel .  
Australia has clearly identified the specific measure at issue and provided a brief summary of the legal 
                                                     
 
43 EC Request for a Preliminary Ruling, paragraph 69.   
44 EC Request for a Preliminary Ruling, paragraph 67.    WT/DS290/R/Add.1 
 Page A-13 
 
 
 basis of the complaint to the standard required by DSU Article 6.2.  There are thus no deficiencies in 
Australia's panel establishment request.    47. However, should the Panel find that Austra lia's panel establishment request requires more 
information and then decide to consider whether the EC's ability to defend itself has been prejudiced, 
Australia submits that the EC has not substantia ted its claim that any deficiencies in the panel 
establishment request have resulted in serious prejudice to the EC as a defendant.    48. Accordingly, the substantive basis of the EC's Request for a Preliminary Ruling should be 
denied in full.   
 WT/DS290/R/Add.1 
Page A-14  
 
 ANNEX A-2 
 
FIRST WRITTEN SUBMISSION OF AUSTRALIA 
 
(23 April 2004) 
 
 
TABLE OF CONTENTS 
 
I. OVERVIEW....................................................................................................................... ................20  
II. INTRODUCTION ................................................................................................................... ..........22  
A. PROCEDURAL HISTORY ................................................................................................................22  
B. TERMINOLOGY USED IN THIS SUBMISSION ...................................................................................22  
III. FACTUAL DESCRIPTION OF THE MEASURE.........................................................................24  
A. THE MEASURE AT ISSUE ...............................................................................................................24  
B. THE PROTECTION AFFORDED TO EC- DEFINED GIS BY REGULATION NO. 2081/92 .......................25  
C. DEFINITION OF A DESIGNATION OF ORIGIN AND A GEOGRAPHICAL INDICATION 
("EC- DEFINED  GI") .....................................................................................................................25  
D. GENERIC NAMES ..........................................................................................................................26  
E. PRODUCT SPECIFICATION .............................................................................................................26  
F. INSPECTION STRUCTURES ............................................................................................................26  
G. NORMAL REGISTRATION PROCESS FOR EC- DEFINED GIS FROM WITHIN THE EC..........................26  
H. HOMONYMS OF EXISTING REGISTERED EC- DEFINED GIS.............................................................27  
I. RIGHT OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI UNDER THE 
NORMAL REGISTRATION PROCESS ................................................................................................27  
J. GROUNDS OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI UNDER 
THE NORMAL REGISTRATION PROCESS .........................................................................................27  
K. SIMPLIFIED REGISTRATION OF EC- DEFINED GIS ALREADY LEGALLY PROTECTED OR 
ESTABLISHED BY USAGE WITHIN EC MEMBER STATES ................................................................27  
L. REGISTRATION OF AN EC- DEFINED GI RELATING TO THE TERRITORY OF ANOTHER WTO  
MEMBER ............................................................................................................................... .......28  
M. PROCEDURE FOR APPLICATIONS FOR REGISTRATION OF AN EC- DEFINED GI RELATING TO 
THE TERRITORY OF ANOTHER WTO  MEMBER ..............................................................................28  
N. RIGHT OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI RELATING 
TO THE TERRITORY OF ANOTHER WTO  MEMBER .........................................................................29  
O. GROUNDS OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI 
RELATING TO THE TERRITORY OF ANOTHER WTO  MEMBER ........................................................30  
P. RIGHT OF OBJECTION BY NON -EC  NATIONALS TO THE PROPOSED REGISTRATION OF AN EC-
DEFINED GI FROM WITHIN THE EC...............................................................................................30  
Q. GROUNDS OF OBJECTION BY NON -EC  NATIONALS TO THE PROPOSED REGISTRATION OF AN 
EC- DEFINED GI FROM WITHIN THE EC ........................................................................................30  
R. PROCESS OF OBJECTION BY OTHER WTO  MEMBER NATIONALS TO THE REGISTRATION OF 
AN EC- DEFINED GI FROM WITHIN THE EC OR FROM ANOTHER WTO  MEMBER OR THIRD 
COUNTRY ............................................................................................................................... ......30  
S. THE RELATIONSHIP BETWEEN EC- DEFINED GIS AND TRADEMARKS ............................................30   WT/DS290/R/Add.1 
 Page A-15 
 
 
 T. TRADEMARKS OF REPUTATION AND RENOWN ..............................................................................32  
U. THE COMMITTEE OF EC MEMBER STATE REPRESENTATIVES ......................................................32  
V. TRANSITIONAL NATIONAL PROTECTION .......................................................................................32  
IV. SUMMARY OF AUSTRALIA'S LEGAL CLAIMS......................................................................32  
V. PRELIMINARY ISSUES............................................................................................................. .....34  
A. AN EC- DEFINED GI IS GENERALLY A TRIPS- DEFINED GI WITHIN THE MEANING OF 
ARTICLE 22.1  OF THE TRIPS  AGREEMENT ..................................................................................34  
VI. THE EC MEASURE IS INCONSISTENT WITH ARTICLES 1.1, 2.1 
(INCORPORATING ARTICLES 10BIS AND 10TER OF THE PARIS CONVENTION 
(1967)), 16.1, 20, 24.5 , 41 AND/OR 42 OF THE TRIPS AGREEMENT ......................................34  
A. THE RELEVANT REQUIREMENTS OF THE TRIPS  AGREEMENT AND OF THE PARIS 
CONVENTION ............................................................................................................................... 34 
(i) Article 16.1 of the TRIPS Agreement...............................................................................34  
(ii) Article 20 of the TR IPS Agreement..................................................................................35  
(iii) Article 24.5 of the TRIPS Agreement...............................................................................35  
(iv) Article 10bis of the Paris Con vention..............................................................................36  
(v) Article 10ter of the Paris Convention ..............................................................................36  
(vi) Article 41 of the TR IPS Agreement..................................................................................37  
(vii) Article 42 of the TR IPS Agreement..................................................................................38  
(viii) Articles 1.1 and 2.1 of the TRIPS Agreement ..................................................................38  
B. THE EC MEASURE PREJUDICES THE ELIGIBILITY OF AN APPLICATION FOR REGISTRATION OF 
A TRADEMARK , CONTRARY TO ARTICLE  24.5  OF THE TRIPS  AGREEMENT ..................................38  
C. THE EC MEASURE DOES NOT GRANT THE OWNER OF A REGISTERED TRADEMARK THE 
RIGHTS REQUIRED TO BE GRANTED BY ARTICLE  16.1  OF THE TRIPS  AGREEMENT ......................40  
(i) The EC measure does not provide for an objection from the owner of a registered 
trademark to be admissible in the event of a likelihood of confusion between a 
registered trademark and a proposed EC-defined GI, contrary to Article 16.1 of 
the TRIPS Agreement.......................................................................................................40  
(ii) The EC measure does not provide for a presumption of a likelihood of confusion in the case of use of an identical sign for identical goods, contrary to Article 16.1 of the TRIPS Agreement...................................................................................................41
 
(iii) The EC measure does not ensure – in the event of a likelihood of confusion between a registered trademark and a proposed EC-defined GI – that an objection from the owner of a registered trademark is considered by the 
Committee of EC Member State representati ves, contrary to Article 16.1 of the 
TRIPS Agreement ............................................................................................................41
 
(iv) The EC measure does not grant to the ow ner of a registered trademark – in the 
event of a likelihood of confusion between a registered trademark and a proposed 
EC-defined GI – the exclusive right required  to be granted by Article 16.1 of the 
TRIPS Agreement ............................................................................................................42  
D. THE EC MEASURE UNJUSTIFIABLY ENCUMBERS THE USE OF A TRADEMARK IN THE COURSE 
OF TRADE WITH SPECIAL REQUIREMENTS , CONTRARY TO ARTICLE 20 OF THE TRIPS  
AGREEMENT ............................................................................................................................... .43 
E. THE EC MEASURE DOES NOT ASSURE EFFECTIVE PROTECTION AGAINST UNFAIR 
COMPETITION , CONTRARY TO ARTICLE  2.1  OF THE TRIPS  AGREEMENT INCORPORATING 
ARTICLE  10BIS(1) OF THE PARIS CONVENTION (1967) ................................................................44  WT/DS290/R/Add.1 
Page A-16  
 
 F. THE EC MEASURE DOES NOT ASSURE APPROPRIATE LEGAL REMEDIES TO REPRESS 
EFFECTIVELY ACTS REFERRED TO IN ARTICLE  10BIS OF THE PARIS CONVENTION (1967),  
CONTRARY TO ARTICLE  2.1  OF THE TRIPS  AGREEMENT INCORPORATING 
ARTICLE  10TER(1) OF THE PARIS CONVENTION (1967) ...............................................................45  
G. THE EC MEASURE DOES NOT MAKE AVAILABLE TO TRADEMARK RIGHT HOLDERS CIVIL 
JUDICIAL PROCEDURES CONCERNING THE ENFORCEMENT OF THEIR INTELLECTUAL 
PROPERTY RIGHTS , CONTRARY TO ARTICLE  42 OF THE TRIPS  AGREEMENT ...............................45  
H. THE PROCEDURES CONCERNING THE ENFORCEMENT OF TRADEMARK RIGHTS MADE 
AVAILABLE BY THE EC MEASURE ARE INCONSISTENT WITH ARTICLE  41.2  OF THE TRIPS  
AGREEMENT ............................................................................................................................... .46 
(i) The EC measure does not make available fair and equitable procedures for the 
enforcement of intellectual property rights, contrary to Article 41.2 of the TRIPS 
Agreement...................................................................................................................... ..46 
(ii) The procedures for the enforcement of trademark rights made available by the EC 
measure are unnecessarily complicated and entail unwarranted delays, contrary 
to Article 41.2 of th e TRIPS Agreement...........................................................................48  
I. DECISIONS ON THE REGISTRATION OF EC- DEFINED GIS UNDER THE EC MEASURE ARE NOT 
BASED ONLY ON EVIDENCE IN RESPECT OF WHICH TRADEMARK RIGHT HOLDERS WERE 
OFFERED THE OPPORTUNITY TO BE HEARD , CONTRARY TO ARTICLE  41.3  OF THE TRIPS  
AGREEMENT ............................................................................................................................... .49 
J. THE EC HAS NOT ENSURED THE AVAILABILITY UNDER ITS LAW OF ENFORCEMENT 
PROCEDURES AS SPECIFIED IN PART III OF THE TRIPS  AGREEMENT SO AS TO PERMIT 
EFFECTIVE ACTION AGAINST ANY ACT OF INFRINGEMENT OF TRADEMARK RIGHTS AS 
REQUIRED BY ARTICLE  41.1  OF THAT AGREEMENT .....................................................................49  
K. THE EC MEASURE DIMINISHES THE LEGAL PROTECTION FOR TRADEMARKS IN RESPECT OF 
DECISIONS BY EC MEMBER STATES TO GRANT TRANSITIONAL NATIONAL PROTECTION , 
CONTRARY TO ARTICLES  2.1  (INCORPORATING ARTICLES  10BIS(1) AND 10TER(1) OF THE 
PARIS CONVENTION (1967)),  16.1,  41.1,  41.2,  41.3  AND /OR 42 OF THE TRIPS  AGREEMENT .......52  
L. THE EC HAS NOT GIVEN EFFECT TO THE PROVISIONS OF THE TRIPS  AGREEMENT OR 
COMPLIED WITH THE SPECIFIED PROVISIONS OF THE PARIS CONVENTION (1967),  CONTRARY 
TO ARTICLES  1.1  AND 2.1 OF THE TRIPS  AGREEMENT ................................................................53  
M. CONCLUSION ............................................................................................................................... 53 
VII. THE EC MEASURE IS INCONSISTENT WI TH ARTICLES 1.1 AND 22.2 OF THE 
TRIPS AGREEMENT ................................................................................................................ ......54  
A. IN RESPECT OF EC- DEFINED GIS, THE EC MEASURE DOES NOT PROVIDE THE LEGAL MEANS 
FOR INTERESTED PARTIES TO PREVENT MISLEADING USE OR USE WHICH CONSTITUTES UNFAIR COMPETITION
, CONTRARY TO ARTICLE  22.2  OF THE TRIPS  AGREEMENT .......................54  
B. THE EC HAS NOT GIVEN EFFECT TO THE PROVISIONS OF THE TRIPS  AGREEMENT AS 
REQUIRED BY ARTICLE  1.1  OF THAT AGREEMENT .......................................................................55  
VIII. THE EC MEASURE IS INCONSISTENT WITH ARTICLE III:4 OF GATT 1994 AND 
ARTICLES 1.1 AND 1.3, 2.1 (INCORPORATING ARTICLE 2 OF THE PARIS 
CONVENTION (1967)) AND 3.1 OF  THE TRIPS AGREEMENT..............................................55  
A. THE EC MEASURE ACCORDS TO THE PRODUCTS OF ANOTHER WTO  MEMBER TREATMENT 
LESS FAVOURABLE THAN THAT IT ACCORDS TO LIKE PRODUCTS OF NATIONAL ORIGIN , 
CONTRARY TO ARTICLE  III:4  OF GATT  1994 ..............................................................................55  
(i) The relevant requirements of Ar ticle III:4 of GATT 1994 ...............................................55  
(ii) The EC measure relates to imported and domestically produced "like products" 
within the meaning of Artic le III:4 of GATT 1994...........................................................56   WT/DS290/R/Add.1 
 Page A-17 
 
 
 (iii) The EC measure is a law affecting the internal sale or offering for sale of 
imported products which are like products to products of EC origin within the meaning of Article III :4 of GATT 1994............................................................................56
 
(iv) EC-defined GIs for imported products ar e accorded less favourable treatment 
than EC-defined GIs for like domestic products, contrary to Article III:4 of GATT 1994 ........................................................................................................................... ......57
 
(v) An EC-defined GI from another WTO Memb er may only be registered in the EC 
in respect of an imported like product if that other WTO Member deems the 
requirements of Regulation No. 2081/92#3 to be satisfied, thus according less 
favourable treatment to imported products contrary to Article III:4 of GATT 1994.......58  
(vi) The EC measure as a whole accords le ss favourable treatment to imported 
products bearing an EC-defined GI than to like domestic products bearing an 
EC-defined GI, contrary to GATT Article III:4 ...............................................................59  
B. THE EC MEASURE DOES NOT ACCORD NATIONAL TREATMENT IN THE PROTECTION OF 
INTELLECTUAL PROPERTY , CONTRARY TO ARTICLES  1.1  AND 1.3,  2.1 (INCORPORATING BY 
REFERENCE ARTICLE  2 OF THE PARIS CONVENTION (1967))  AND 3.1OF THE TRIPS  
AGREEMENT ............................................................................................................................... .60 
(i) The relevant requirements of Articles 1.1 and 1.3, 2.1 and 3.1 of the TRIPS 
Agreement and Article 2 of th e Paris Conven tion (1967)................................................60  
(ii) A right of objection was available to persons resident or established in an EC 
Member State that was not available to other WTO Member nationals in respect 
of the registration of more than 120 EC-defined GIs under the normal registration process, contrary to Articles 1.1 and 1.3, 2.1 (incorporating Article 2 
of the Paris Convention (1967)) and 3.1 of the TRIP S Agreement..................................62
 
(iii) A right of objection was available to persons resident or established in an EC 
Member State that was not available to other WTO Member nationals in respect 
of the registration of more than 480 EC-defined GIs under the simplified 
registration process, contrary to Articles 1.1 and 1.3, 2.1 (incorporating Article 2 
of the Paris Convention (1967)) and 3.1 of the TRIP S Agreement..................................64  
(iv) The EC measure as a whole does not accord national treatment to non-EC 
nationals, contrary to Articles 1.1 and 1.3, 2.1 (incorporating Article 2 of the 
Paris Convention (1967)) and 3.1 of the TRIPS Agreement............................................66  
IX. ARTICLE 65.1 OF THE TRIPS AGREEMENT DOES NOT EXCUSE 
INCONSISTENCIES WITH THE EC'S OBLIGATIONS UNDER THAT 
AGREEMENT ...................................................................................................................... .............68  
X. THE EC MEASURE IS INCONSISTENT WITH ARTICLE 2.1 AND 2.2 OF THE TBT 
AGREEMENT ...................................................................................................................... .............68  
A. THE EC MEASURE IS IN PART A TECHNICAL REGULATION WITHIN THE MEANING OF ANNEX 
1 TO THE TBT  AGREEMENT .........................................................................................................68  
(i) Definition of a "techni cal regula tion" .............................................................................68  
(ii) The EC measure applies to an identifiabl e product or group  of products.......................69  
(iii) The EC measure lays down product characteristics or their related process and 
production methods, including the app licable administrative provisions .......................69  
(iv) The EC measure mandates compliance with product characteristics or their 
related process and production methods, including the applicable administrative provis ions..................................................................................................................... ....71
 
B. THE EC MEASURE ACCORDS TO PRODUCTS IMPORTED FROM THE TERRITORY OF ANY WTO  
MEMBER TREATMENT LESS FAVOURABLE THAN THAT ACCORDED TO LIKE PRODUCTS OF 
NATIONAL ORIGIN , CONTRARY TO ARTICLE 2.1 OF THE TBT  AGREEMENT ..................................72  WT/DS290/R/Add.1 
Page A-18  
 
 (i) The relevant requirements of the TBT Agreement ...........................................................72  
(ii) The EC measure concerns both imported and domestically produced "like 
products" within the meaning of Ar ticle 2.1 of the TBT Agreement ................................73  
(iii) The EC measure provides "less favour able" treatment to like imported and 
domestically produced products within the meaning of Article 2.1 of the TBT Agreement...................................................................................................................... ..74
 
C. THE EC MEASURE HAS BEEN PREPARED , ADOPTED AND /OR APPLIED WITH THE EFFECT OF 
CREATING UNNECESSARY OBSTACLES TO INTERNATIONAL TRADE , BEING MORE TRADE -
RESTRICTIVE THAN NECESSARY TO FULFIL A LEGITIMATE OBJECTIVE , TAKING ACCOUNT OF 
THE RISKS NON -FULFILMENT WOULD CREATE , CONTRARY TO ARTICLE 2.2 OF THE TBT  
AGREEMENT ............................................................................................................................... .75 
(i) The relevant requirements of the TBT Agreement ...........................................................75  
(ii) The EC measure pursues a legitimate object ive within the meaning of Article 2.2 
of the TBT Ag reement ......................................................................................................77  
(iii) The EC measure fulfils, or is capable of fulfilling, its legitimate objective within 
the meaning of Article 2.2 of the TBT Agreement............................................................77  
(iv) The EC measure is more trade restricti ve than necessary to fulfil its legitimate 
objective, taking account of the risks non-fulfilment would create, contrary to 
Article 2.2 of the TBT Agreement ....................................................................................77  
D. CONCLUSION ............................................................................................................................... 79 
XI. AS A CONSEQUENCE, THE EC HAS NO T COMPLIED WITH ITS OBLIGATIONS 
UNDER ARTICLE XVI:4 OF THE WTO AGREEMENT...........................................................80  
XII. CONCLUSION ..................................................................................................................... .............80  
  WT/DS290/R/Add.1 
 Page A-19 
 
 
 TABLE OF CASES CITED IN THIS SUBMISSION 
Short Title Full Title 
US – Section 211 
Appropriations Act  United States – Section 211 Omnibus Appropriations Act of 1998 , Report of 
the Appellate Body, WT/DS176/AB/R, 2 January 2002  
US – Section 337  United States – Section 337 of the Tariff Act of 1930 , GATT Panel Report, 
adopted 7 November 1989, BISD 36S/345  
Korea – Beef  Korea – Measures Affecting Imports of Fresh, Chilled and Frozen Beef , 
Report of the Appellate Body, WT/DS161/AB/R, WT/DS169/AB/R, 
11 December 2000  
EC – Asbestos  European Communities – Measures A ffecting Asbestos and Asbestos-
Containing Products , Report of the Appellate Body, WT/DS135/AB/R, 
12 March 2001  
EC – Bananas  European Communities – Regime for the Importation, Sale and 
Distribution of Bananas , Report of the Appellate Body, WT/DS27/AB/R, 
9 September 1997  
US – FSC (Article 21.5)  United States – Tax Treatment for “Foreign Sales Corporations” , Recourse 
to Article 21.5 of the DSU by the European Communities, Report of the 
Appellate Body, WT/DS108/AB/RW, 14 January 2002  
EC – Sardines  European Communities – Trade Description of Sardines , Report of the 
Appellate Body, WT/DS231/AB/R, 26 September 2002  
  
OTHER SOURCES CITED IN THIS SUBMISSION 
Short Title Full Title 
Bodenhausen  Guide to the Application of the Pa ris Convention for the Protection of 
Industrial Property as Revised at Stockholm in 1967 , Professor, G H C 
Bodenhausen, BIRPI, 1969, WIPO reprint 1991, Geneva   
Gervais  The TRIPS Agreement:  Drafting History and Analysis , Daniel Gervais, 
Sweet & Maxwell, London, 1998   
OED  The New Shorter Oxford English Dictionary , Ed. Lesley Brown, 
Clarendon Press, Oxford, 1993   
 
 
 WT/DS290/R/Add.1 
Page A-20 
 
 
 I. OVERVIEW 
1. This dispute concerns the regime establis hed by the European Communities (EC) for the 
registration and protection of geographical indica tions – or GIs – for agricultural products and 
foodstuffs on a Community-wide basis.  The dispute does not concern the registration and/or 
protection of GIs for wines or spirits.   
 2. Council Regulation (EEC) No. 2081/92 on the protection of geographical indications and 
designations of origin for agr icultural products and foodstuffs  ("Regulation No. 2081/92") established 
the regulatory framework that governs the complex EC  regime.  In addition to Council Regulation No. 
2081/92, there is a long list of subsidia ry regulations at Community level.
1  Regulation No. 2081/92 
expressly requires EC Member States to perform so me specific activities and authorises the Member 
States to perform other actions at their discretion.  EC Member State national courts and the European Court of Justice enforce the protection of GIs afforded by Regulation No. 2081/92.    3. Since its adoption in 1992, Regulation No. 2081/92 itself has been substantially amended on 
two occasions:  in 1997, relating principally to transitional issues arising from the proposed 
registration of geographic terms under Regulation No. 2081/92;  and mo re extensively in 2003, in part 
"to guarantee that the Community registration pro cedure is available" to WTO Members meeting 
conditions of reciproc ity and equivalence
2.  Further, GIs have been continuously registered under the 
regime since registrations commenced in 1996.   
 
4. The Agreement on Trade-Related Aspects of Intellectual Property Rights  ("the TRIPS 
Agreement " or "TRIPS") expressly recognises geographical indications as a category of intellectual 
property.  In this dispute, Australia  is not contesting the EC's right:   
 
• to register and/or protect GIs as intellectual property;   
 
• to implement in its law more extensive pr otection for GIs than is required to be 
provided by the TRIPS Agreement ;   
 
• to limit that more extensive protection to GIs that meet a more rigorous attributive 
test than is required by the TRIPS Agreement , while protecting GIs that otherwise 
conform with the definition at TRIPS Ar ticle 22.1 through individual EC Member 
State legislation;  or  
 
• not to offer more extensive protection at the Community level to GIs which conform 
only to the basic definition of a GI at TRIPS Article 22.1.   
 5. However, the EC is providing that more extensive protection for GIs in a way that 
contravenes other provisions of the TRIPS Agreement , as well as provisions of the General Agreement 
on Tariffs and Trade 1994  ("the GATT 1994" or "GATT"), of the Agreement on Technical Barriers to 
Trade  ("the TBT Agreement " or "TBT") and, as a consequence, of the Marrakesh Agreement 
Establishing the World Trade Organization  ("the WTO Agreement ").   
 6. Specifically, the EC is failing to provide th e level of protection of trademarks expressly 
required to be conferred pursuant  to various provisions of the TRIPS Agreement , including because 
the EC regime:    
                                                     
 
1 These are listed in Annex 1 to this Submission.   
2 Regulation No. 692/2003, preambular clause 9, Exhibit COMP-1.h.    WT/DS290/R/Add.1 
 Page A-21 
 
 
 • denies to the owner of a registered  trademark 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 which are identical or  similar to those in respect of which the 
trademark is registered where such use would result in a likelihood of confusion, contrary to TRIPS Article 16.1;   
 
• denies to the owner of a registered  trademark a presumption of a likelihood of 
confusion in case of use of an identical sign for identical goods, contrary to TRIPS Article 16.1;   
 
• denies to nationals of other WTO Members effective protection against unfair 
competition and appropriate legal remedies to repress effectively all acts of unfair 
competition, contrary to TRIPS Ar ticle 2.1 incorporating Articles 10 bis(1) and 
10ter(1) of the Paris Convention for the Protection of Industrial Property  ("the Paris 
Convention (1967)" or "Paris");  and  
 
• denies to nationals of other WTO Members enforcement procedures  so as to permit 
effective action against any act of infringement of a trademark right, and associated 
procedural and due process rights, contrary to TRIPS Articles 41 and 42.   
 7. Similarly, the EC's failure to provide at Community level the legal means for interested 
parties to prevent – in respect of a GI registered, or proposed to be registered, under the EC regime – 
misleading use or use which constitutes an act of unfai r competition is contrary to TRIPS Article 22.2.   
 
8. In relation to the registration of GIs under the regime, the EC fails to provide national 
treatment:    
• to the products of other WTO  Members, contrary to GATT Article III:4 as well as 
TBT Article 2.1;  and  
 
• in the protection of intellectual property, contrary to TRIPS Articles 2.1 
(incorporating Paris Article 2) and 3.1.   
 9. Further, the EC regime comprises a technical regulation that is more restrictive than necessary 
to fulfil a legitimate objective, taking account of the risks non-fulfilment would create, contrary to 
TBT Article 2.2.   
 
10. Australia reiterates that it is not contesting the EC's right to offer more extensive protection to 
GIs than is required to be offered pursuant to the TRIPS Agreement .  However, if this right is to be 
exercised at the Community level, so too should the interconnected obligations be fulfilled at the 
Community level.  Australia submits that, if th e EC is to offer "one-stop" Community level 
registration of GIs for either EC nationals or produc ts, it must also, for example, offer a "one-stop" 
Community level means:  for interested parties to pr event, in respect of that GI registration, any use 
which constitutes an act of unfair competition within the meaning of Paris Article 10 bis, consistent 
with the requirement of Paris Article 10 ter;  for trademark right holders to exercise their rights in 
respect of the registration of GIs under the regime;  and for the registration of a GI from another WTO 
Member.  Requiring trademark owners to initiate separate legal proceedings in up to 25 national 
courts to exercise the rights required to be bestowed on them under the TRIPS Agreement  as these 
relate to a GI registered, or proposed to be re gistered, under the "one-stop" Community level EC 
regime is, in Australia's view, fundamentally  at odds with the object and purpose of the 
TRIPS 
Agreement .   
 WT/DS290/R/Add.1 
Page A-22 
 
 
 11. For the reasons set out in detail in this S ubmission, Australia submits that the Panel should 
find that the EC regime for the registration and pr otection of GIs is inconsistent with the EC's 
obligations pursuant to the TRIPS Agreement , GATT 1994, the TBT Agreement  and the WTO 
Agreement .   
 
II. INTRODUCTION 
A. PROCEDURAL HISTORY  
12. On 17 April 2003, Australia requested consultati ons with the EC pursuant to Article 4 of the 
Understanding On Rules Governing the Settlement of Disputes  (DSU), Article XXII of the GATT 
1994, Article 64 of the TRIPS Agreement , and Article 14 of the TBT Agreement  relating to the 
protection of trademarks and to the registrati on and protection of geographical indications for 
foodstuffs and agricultural products in the EC.3  Australia's request followed an earlier similar request 
for consultations from the United States to the EC.4  Argentina, Bulgaria, Chinese Taipei, Colombia, 
Cyprus, Czech Republic, Hungary , Malta, Mexico, New Zealand, Romania, Slovak Republic, 
Slovenia, Turkey and the United States requested to  be joined in the consultations requested by 
Australia. 5   
 13. Consultations between Australia and the EC, and between the United States and the EC, were 
held jointly in Geneva on 27 May 2003, but failed to resolve the dispute.    
14. On 21 July 2003, Australia requested the Di spute Settlement Body (DSB) to establish a panel 
pursuant to Articles 4.7 and 6 of the DSU, Article XXIII of GATT 1994, Article 64 of the TRIPS 
Agreement  and Article 14 of the TBT Agreement .
6  The United States similarly requested 
establishment of a panel.7   
 
15. On 2 October 2003, the DSB agreed that a single panel should be established pursuant to 
Article 9.1 of the DSU with standard terms of reference.8  The terms of reference of the Panel are:   
 
To examine, in the light of the relevant pr ovisions of the covered agreements cited by 
the United States in document WT/DS174/20 and by Australia in document WT/DS290/18, the matters referred to the DSB by the United States and Australia in 
those documents, and to make such findings as will assist the DSB in making the 
recommendations or in giving the rulings provided for in those agreements.   
16. Argentina, Brazil, Canada, China, Chinese Taipei, Colombia, Guatemala, India, Mexico, 
New Zealand, Norway, Turkey and the United States reserved rights as third parties to the dispute.   
 
B. T
ERMINOLOGY USED IN THIS SUBMISSION  
17. Article 1.1 of Regulation No. 2081/92 states  that the Regulation "lays down rules on the 
protection of designations of origin and geographi cal indications" of specified agricultural products 
and foodstuffs other than wines and spirits.  Howeve r, the distinction between a designation of origin 
and a geographical indication within the meaning of  the Regulation is not germane to Australia's 
                                                      
3 WT/DS290/1.   
4 WT/DS174/1 and WT/DS174/1/Add.1.   
5 WT/DS290/11, WT/DS290/3, WT/DS290/16, WT/DS290/13, WT/DS290/5, WT/DS290/4, 
WT/DS290/12, WT/DS290/2, WT/DS290/10, WT/DS290/8, WT/DS290/14, WT/DS290/15, WT/DS290/7, 
WT/DS290/9 and WT/DS290/6 respectively.   
6 WT/DS290/18.   
7 WT/DS174/20.   
8 WT/DSB/M/156, pages 6-8.    WT/DS290/R/Add.1 
 Page A-23 
 
 
 claims in this dispute.  Thus, throughout this  Submission, except where specifically indicated 
otherwise, Australia will use the expressions:    
"GI" to refer to a geographical indication generally;   
"EC-defined GI " to refer to both a designation of origin and a geographical indication 
as these are defined and used in Regulation No. 2081/92;   
"TRIPS-defined GI " to refer to a geographical indication as this is defined in TRIPS 
Article 22.1;  and  
"Indication of source " to refer to an indication of source within the meaning of Paris 
Article 1(2).  While the Paris Convention (1967) does not expressly define an 
indication of source, "indications of source are generally understood to include all … 
signs used to indicate that a product … originates in a given country or group of countries, region or locality".
9  Thus, both an EC-defined GI and a TRIPS-defined GI 
are categories of indications of source.   
18. Regulation No. 2081/92 has been amended on several occasions.  Substantive amendments 
relevant to Australia's claims and arguments in th is dispute were introduced in Council Regulations 
(EC) No. 535/97 of 17 March 199710 and No. 692/2003 of 8 April 200311.  To identify the appropriate 
version of Regulation No. 2081/92, throughout this Submission Austra lia will, except where indicated 
otherwise, use the terminology:    
"Regulation No. 2081/92 " to refer to the Regulation in a broad sense or in relation to 
provisions that have not been amended sin ce the Regulation originally entered into 
force;   
"Regulation No. 2081/92#1 " to refer to the Regulation as originally adopted and in 
force from 24 July 1993;   
"Regulation No. 2081/92#2 " to refer to the Regulation as amended by Council 
Regulation (EC) No. 535/97 of 17 March 19 97 with effect from 28 March 1997;  and  
"Regulation No. 2081/92#3 " to refer to the Regulation as amended by Council 
Regulation (EC) No. 692/2003 of 8 April 2003 with effect from 24 April 2003.   
19. Other terminology and abbreviations used in this Submission are:   
 
"Commission " to refer to the European Commission;   
"Committee of EC Member State representatives " to refer to the decision-making 
process established by Article 15 of Re gulation No. 2081/92#1 and amended by 
Council Regulation (EC) No. 806/2003 of 14 April 2003 adapting to Decision 
1999/468/EC the provisions relating to committees which assist the Commission in 
the exercise of its implementing powers laid  down in Council instruments adopted in 
accordance with the consultati on procedure (qualified majority)
12;   
"Official Journal " for the Official Journal of the European Communities ;  and  
                                                      
9 Bodenhausen , page 23.   
10 Exhibit COMP-1.e.   
11 Exhibit COMP-1.h.   
12 Exhibit COMP-1.i.  A copy of Council Decision 1999/468/EC of 28 June 1999 laying down the 
procedures for the exercise of implemen ting powers conferred on the Commission  is at Exhibit COMP-8.   WT/DS290/R/Add.1 
Page A-24 
 
 
 "Register " for the Register of protected designations of origin and protected 
geographical indications  provided for by Article 6.3 of Regulation No. 2081/92.   
III. FACTUAL DESCRIPTION OF THE MEASURE 
A. THE MEASURE AT ISSUE  
20. The measure at issue in this dispute ("the EC measure") is the EC's regime for the registration 
and protection of EC-defined GIs on a Community-wide basis, comprising:   
• 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 ;   
 
• amendments to that Regulation;13  and  
 
• actions to implement and enforce that Regulation, including:   
 
o Commission Regulation (EEC) No. 2037/93 of 27 July 1993 as amended;14   
 
o Commission Regulation (EC) No. 1107/96 of 12 June 1996 as amended;15   
 
o Commission Regulation (EC) No. 2400/96 of 17 December 1996 as 
amended;16   
 
o by EC Member States to implement Regulation No. 2081/92 at national level, 
in particular, actions by Member States to grant transitional national 
protection pursuant to Article 5.5 of Regulation No. 2081/92#2;  and  
 
o judicial decisions relating to the enforcement of Regulation No. 2081/92, for 
example:   
 
• Judgment of the European Court of Justice of 16 March 1999, Joined 
Cases C-289/96, C-293/96 and C-299/96, concerning the registration of "Feta" (the "Feta judgment");
17  and  
 
• Order of the Court of First Instance (Fifth Chamber) of 
30 January 2001, Case T-215/00, concerning the geographical indication "Canard à foie gras du Sud-Ouest (the "Canard 
judgment").
18   
                                                      
13 Exhibit COMP-1.a comprises, for the convenience of the Panel, an unofficial consolidated copy 
prepared by the complaining parties of Regulation No. 2081/92 showing all amendments to date.  Regulation 
No. 2081/92 and all amendments to date are shown in Annex 1 and supported by COMP-1.   
14 Regulation No. 2037/93 and all amendments to date are shown in Annex 1 and supported by Exhibit 
COMP-2.   
15 Regulation No. 1107/96 and all amendments to date are shown in Annex 1 and supported by Exhibit 
COMP-3.   
16 Regulation No. 2400/96 and all amendments to date are shown in Annex 1 and supported by Exhibit 
COMP-4.   
17 Exhibit COMP-11.   
18 Exhibit COMP-12.    WT/DS290/R/Add.1 
 Page A-25 
 
 
 21. Regulation No. 2081/92 establishes the regulat ory framework for the regime.  Since being 
adopted in 1992, the Regulation has been substa ntially amended on two occasions.  In particular, 
Regulation No. 2081/92#3 contains sever al amended and new provisions.   
 
22. Further, under Regulation No. 2081/92#3, na tural mineral and spring waters were removed 
from the list of products for which EC-defined GI re gistration and protection is available, while other 
products – including pasta and wool – were added.  In addition, the scope of the Regulation was 
enlarged to include wine vinegars.19   
 
23. The following sections describe the principa l features of Regulation No. 2081/92 including, 
where appropriate, as these have been amended.    B. T
HE PROTECTION AFFORDED TO EC- DEFINED GIS BY REGULATION NO. 2081/92 
24. There is no distinction in the protection afforded to a designation of origin and a geographical 
indication as these are defined in the Regulation.  Un der Article 13.1, a registered EC-defined GI "… 
shall be protected against:   
 
(a) any direct or indirect commercial use of a name registered in respect of products not 
covered by the registration insofar as those products are comparable to the products registered under that name or insofar as usi ng 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  accompanied by an expression such as 'style', 
'type', 'method', 'as produced in', 'imitation' or similar;   
(c) any other false or misleading indication 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 concer ned, and the packing of the product in a 
container liable to convey a false impression as to its origin;   
(d) any other practice liable to mislead the public as to the true origin of the product.   
…"   
C. D
EFINITION OF A DESIGNATION OF OR IGIN AND A GEOGRAPHICAL INDICATION 
("EC- DEFINED  GI") 
25. Article 2.2(a) defines a designation of origin  as:  "… the name of a region, a specific place or, 
in exceptional cases, a country, used to describe an agricultural product or a foodstuff:  originating in 
that region, specific place or country, and the quali ty or characteristics of which are essentially or 
exclusively due to a particular geographical environm ent with its inherent na tural and human factors, 
and the production, processing and preparation of whic h take place in the defined geographical area".   
 26. Article 2.2(b) defines a geographical indication  as:  "… the name of a region, a specific place 
or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:  originating 
in that region, specific place or country, and wh ich possesses a specific quality, reputation or other 
characteristics attributable to that geographical origin and the production and/or processing and/or 
preparation of which take place in the defined geographical area".   
                                                     
 
19 Regulation No. 692/2003, Articles 1.1 and 1.16 and Annexes I and II, Exhibit COMP-1.h.  For the 
approximately 30 mineral and spring water GIs already in cluded in the Register, there is a transitional period 
until 31 December 2013 after which date these na mes will no longer be included in the Register.    WT/DS290/R/Add.1 
Page A-26 
 
 
  
D. GENERIC NAMES  
27. Article 3.1 provides that "[n]ames that have become generic may not be registered …".   
 
E. PRODUCT SPECIFICATION  
28. Under Article 4, to be eligible to use an EC -defined GI, an agricultural product or foodstuff 
must comply with a product specification, includ ing:  a description of the  principal physical, 
chemical, microbiological and/or organoleptic charact eristics of the product or the foodstuff;  the 
details bearing out the link with the geographical e nvironment or the geographical origin within the 
meaning of an EC-defined GI;  and details of the in spection structures to ensure that products bearing 
an EC-defined GI meet the requirements of the product specification.    F. I
NSPECTION STRUCTURES  
29. Under Article 10.1, EC Member States are requi red to ensure that inspection structures are in 
place, with the function of "ensur [ing]  that agricultural products and foodstuffs bearing a protected 
name meet the requirements laid down in the specifications."   
 G. N
ORMAL REGISTRATION PROCESS FOR EC- DEFINED GIS FROM WITHIN THE EC 
30. Under Article 5, a group may apply for registration of an EC-defined GI in respect of 
agricultural products or foodstuffs which it produces or  obtains.  The registration application must 
include the product specification, and be forwar ded to the EC Member State in which the 
geographical area is located.  The EC Member Stat e must forward the application, including the 
product specification, to the Commission if it cons iders that the application complies with the 
Regulation.    
31. Under paragraphs 1-4 of Article 6, the Co mmission has six months to verify whether the 
application includes all of the particulars requi red by the product specification.  If the Commission 
concludes the "name" qualifies for protection, it is to  publish the application details and, "if necessary, 
the grounds for its conclusions", in the Official Jour nal.  "If no statement of objections is notified to 
the Commission", the "name" is entered in the Register  and the entry notified in the Official Journal.  
Regulation No. 2081/92#3 amended Article 6.1 to require the Commission to "make public any 
application for registration [of an EC-defined GI] , stating the date on which the application was 
made".    32. Under Article 7, an EC Member State may obj ect to the proposed registration of the "name" 
within six months of publication of the application in the Official Journal.  If a statement of objection 
is admissible, "… the Commission shall ask the Member States concerned to seek agreement among 
themselves …".  If the Members States concerned agree, the Commission publishes the entry of the 
"name" in the Register in the Official Journal.  If the Member States concerned do not agree, "the 
Commission shall take a decision [in the Committee of EC Member State representatives]  having 
regard to traditional fair practice and of the act ual likelihood of confusion".  If the Commission 
decides to enter the "name" in the Register, it is to  publish that fact in the Official Journal.   
 
33. More than 140 EC-defined GIs have been registered pursuant to the normal registration 
process, and registrations are ongoing.  The list of EC-d efined GIs registered pursuant to this process 
is published in Commission Regulation (EC) No. 2400/96 as amended.
20   
 
                                                      
20 Exhibit COMP-4.    WT/DS290/R/Add.1 
 Page A-27 
 
 
 H. HOMONYMS OF EXISTING REGISTERED EC- DEFINED GIS 
34. Under Article 6.6 of Regulation No. 2081/92#3, if an application is made to register a 
homonym of an existing registered EC-defined GI, whether from an EC Member State or another WTO Member:  "the Commission may request the opinion of the [Committee of EC Member State 
representatives] ".   
 I. R
IGHT OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI UNDER THE 
NORMAL REGISTRATION PROCESS  
35. Under Article 7.3, "[a]ny legitimately concerned natural or  legal person may object to the 
proposed registration [by the Commission]  by sending a duly substantiated statement to the competent 
authority of the [EC]  Member State in which he resides or is established".   
 J. G
ROUNDS OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI UNDER THE 
NORMAL REGISTRATION PROCESS  
36. Under Article 7.4 of Regulation No. 2081/92# 1, "[a] statement of objection shall be 
admissible only if it:  either shows non-compliance with the [the definition of an EC-defined GI] , or 
shows that the proposed registration of a name would jeopardize the existence of an entirely or partly 
identical name or trade mark  or the existence of products which are legally on the market at the time 
of publication of this regulation in the [Official Journal] , or indicates the features which demonstrate 
that the name whose registration is applied for is generic in nature" (emphasis added) .   
 
37. Article 7.4 was amended in Regulation No. 2081/92#2 so that the second ground for 
admissibility of an objection to a proposed registration of an EC-defined GI became "that the registration of the name proposed would jeopardize th e 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 preceding the date of the publication [of the application for registration in the Official 
Journal] " (emphasis added) .   
 K. S
IMPLIFIED REGISTRATION OF EC- DEFINED GIS ALREADY LEGALLY PROTECTED OR 
ESTABLISHED BY USAGE WITHIN EC MEMBER STATES  
38. Under Article 17 of Regulation No. 2081/92#1,  EC Member States had six months to inform 
the Commission "which of their legally protected names or … which of their names established by 
usage they wish [ed] to register pursuant to this Regulation.   …  [T]he Commission shall register the 
names … which comply with [the definition of an EC-defined GI]  and [the product specification 
requirements] .  [There is no objection process] .  However, generic names shall not be added".   
 
39. However, in the Minutes of the Council Mee ting that adopted Regulation No. 2081/92#1, the 
Council and the Commission stated th at "where there are agricultura l products or foodstuffs already 
being legally marketed …, it has been provided fo r any Member States to object to the registration 
under the provisions of Article 7 of the regulation".21   
 40. More than 480 EC-defined GIs were regist ered pursuant to this simplified registration 
process.  The list of EC-defined GIs register ed under the simplified process is published in 
Commission Regulation (EC) No. 1107/96 as amended.
22   
 41. Article 17 was repealed in Regulation No. 2081/92#3.  "However, the provisions of 
[Article 17]  shall continue to apply to registered names or to names for which a registration 
                                                     
 
21 The Feta judgment, Exhibit COMP-11.   
22 Exhibit COMP-3.   WT/DS290/R/Add.1 
Page A-28 
 
 
 application was made by the procedur e provided for in Article 17 before [Regulation No. 2081/92#3]  
entered into force".23   
 L. R
EGISTRATION OF AN EC- DEFINED GI RELATING TO THE TERRITORY OF ANOTHER WTO  
MEMBER  
42. Article 12 provides:   
 
1. Without prejudice to international ag reements, this Regulation may apply to 
an agricultural product or foodstuff from a third country provided that:   
– the third country is able to give guarantees identical or equivalent to [the 
product specification requirement] ,  
– the third country concerned has inspect ion arrangements equivalent to those 
laid down [in the Regulation] ,  
– the third country concerned is prepared  to provide protection equivalent to 
that available in the Community to corresponding agricultural products for 
[sic]  foodstuffs coming from the Community.   
2. If a protected name of a third country is identical to a Community protected 
name, registration shall be granted with due  regard for local and traditional usage and 
the practical risks of confusion.   
Use of such names shall be authorised only if the country of origin of the product is 
clearly and visibly indicated on the label.   
43. Article 12.1 was amended in Regulation No. 20 81/92#3 to add the requirement that "the third 
country concerned has … a right to objection equivalent to [that]  laid down in this Regulation".   
 M. P
ROCEDURE FOR APPLICATIONS FOR REGISTRATION OF AN EC- DEFINED GI RELATING TO THE 
TERRITORY OF ANOTHER WTO  MEMBER  
44. An application process for the registrati on of a "name" from another WTO Member was 
introduced in Regulation No. 2081/92#3.  A new Ar ticle 12.3 provided:  "[t]he Commission shall 
examine, at the request of the country concerned, and [in the Committee of EC Member State 
representatives]  whether a third country satisfies the e quivalence conditions and offers guarantees [of 
the conditions for registration of third country GIs]  as a result of its national legislation.  Where the 
Commission decision is in the affirmative, the pr ocedure set out in Article 12a shall apply."   
 45. Article 12a was inserted in Regulation No. 2081/92#3 to provide:    
1. …  [I]f a group or a natural or legal person … in a third country wishes to 
have a name registered under this Regulati on it shall send a registration application to 
the authorities in the country in which the geographical area is located.  Applications 
must be accompanied by [the product specification]  for each name.  …   
                                                     
 
23 Article 1.15 of Regulation No. 692/2003, Exhib it COMP-1.h.  Consistent with that provision, 
Regulation Nos 828/2003 of 14 May 2003 (Exhibit COMP-3.d) and 1571/2003 of 5 September 2003 (Exhibit 
COMP-3.e), for example, amended the product specifications of names entered in the Register pursuant to 
Article 17 of Regulation No. 2081/92#1.    WT/DS290/R/Add.1 
 Page A-29 
 
 
 2. If the third country … deems the requirements of this Regulation to be 
satisfied it shall transmit the registration application to the Commission accompanied by:   
(a) a description of the legal provisions an d the usage on the basis of which the 
designation of origin or the geographical indication is protected or 
established in the country,  
(b) a declaration that [the inspection structures]  are established on its territory, 
and  
(c) other documents on which it has based its assessment.   
46. Article 12b was inserted in Regulation No. 2081/92#3 to provide:   
 
1. The Commission shall verify within six months whether the registration request sent by the third country contains a ll the necessary elements and shall inform 
the country concerned of its conclusion.   
If the Commission:   
(a) concludes that the name satisfies the conditions for protection, it shall publish 
the application [for objections] …  Prior to publication the Commission may ask the 
[Committee of EC Member State representatives]  for its opinion;   
(b) concludes that the name does not satis fy the conditions for protection, it shall 
decide, after consulting the country ha ving transmitted the application, in [the 
Committee of EC Member State representatives]  not to proceed with publication [for 
objections] .   
… 3. …  Where one or more objections are admissible the Commission shall adopt 
a decision [in the Committee of EC Member State representatives]  after consulting 
the country which transmitted the applicati on, taking account of traditional and fair 
usage and the actual risk of confusion on Community territory.  If the decision is to proceed with registration the name shall be entered in the [Register]  and published …   
4. If the Commission receives no statement of objection it shall enter the 
name(s) in question in the [Register]  and publish the name(s) …   
N. R
IGHT OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI RELATING TO 
THE TERRITORY OF ANOTHER WTO  MEMBER  
47. Article 12b.2 was inserted in Regulation No. 2081 /92#3 to provide that, within six months of 
the date of publication of an application for re gistration of an EC-defined GI relating to a 
geographical location in the territory of another WTO Member, any natural or legal person from an 
EC Member State or a WTO Member with a legitimat e interest may object to the application.  Where 
the objection comes from another WTO Member, "Article 12d … shall apply".   
 48. Article 12d of Regulation No. 2081/92#3 provides in relevant part:  "a ny natural or legal 
person that has a legitimate interest and is from a WTO member country or a third country recognised 
under the procedure provided for in Article 12(3) may object to the proposed registration by sending a WT/DS290/R/Add.1 
Page A-30 
 
 
 duly substantiated statement to the country in which it resides or is established, which shall transmit it 
… to the Commission".    O. G
ROUNDS OF OBJECTION TO THE PROPOSED REGISTRATION OF AN EC- DEFINED GI RELATING 
TO THE TERRITORY OF ANOTHER WTO  MEMBER  
49. Under Articles 12b and 7.4 of Regulation No . 2081/92#3 read together, the grounds of 
objection to the registration of an EC-defined GI re lating to a geographical location in the territory of 
another WTO Member are the same whether the objection comes from an EC Member State or another WTO Member:  "[a] statement of objection shall be admissible only if it:  either shows non-
compliance with the definition [of an EC-defined GI] , shows that the registration of the name 
proposed would jeopardize the existence of an entirely or partly identical name or of a mark or the 
existence of products which are legally on the market  for at least five years preceding the date of 
publication [inviting objections] , or indicates the features which demonstrate that the name whose 
registration is applied for is generic in nature".  Th e criteria must be demonstrated with regard to EC 
territory.   
 
P. R
IGHT OF OBJECTION BY NON -EC  NATIONALS TO THE PROPOSED REGISTRATION OF AN EC-
DEFINED GI FROM WITHIN THE EC 
50. Article 12d.1 was inserted in Regulation No. 208 1/92#3 to provide:  "[w]ithin six months of 
the date of [publication  of an application for registration of a "name" from within the EC] , any 
natural or legal person that has a legitimate interest and is from a WTO member country or a third 
country recognised under the procedure provided for in Article 12(3) may object to the proposed registration …".    Q. G
ROUNDS OF OBJECTION BY NON -EC  NATIONALS TO THE PROPOSED REGISTRATION OF AN 
EC- DEFINED GI FROM WITHIN THE EC 
51. Under Articles 12d.2 and 7.4 of Regulation No. 2081/92#3 read together:  "[a] statement of 
objection shall be admissible only if it:  e ither shows non-compliance with the definition [of an EC-
defined GI] , shows that the registration of the name pr oposed would jeopardise the existence of an 
entirely or partly identical name or of a mark or  the existence of products which are legally on the 
market for at least five years preceding the date of publication [inviting objections] , or indicates the 
features which demonstrate that the name whose regist ration is applied for is ge neric in nature".  The 
criteria must be demonstrated with regard to EC territory.    R. P
ROCESS OF OBJECTION BY OTHER WTO  MEMBER NATIONALS TO THE REGISTRATION OF AN 
EC- DEFINED GI FROM WITHIN THE EC OR FROM ANOTHER WTO  MEMBER OR THIRD 
COUNTRY  
52. Under Articles 12b.2 and 12d.1 of Regulation No. 2081/92#3 read together, a person "from a 
WTO Member country or a third country recognised under the procedure provided for in Article 12(3)" with a legitimate interest may object to  the proposed registration of an EC-defined GI – 
whether concerning a geographical locality within an  EC Member State, another WTO Member or a 
third country – "by sending a duly substantiated stat ement to the country in which it resides or is 
established, which shall transmit it … to the Commission".   
 S. T
HE RELATIONSHIP BETWEEN EC- DEFINED GIS AND TRADEMARKS  
53. Article 14 of Regulation No. 2081/9 2#1 provided in relevant part:   
 
1. Where a designation of origin or geographical indication is registered in 
accordance with this Regulation, the appli cation for registration of a trade mark  WT/DS290/R/Add.1 
 Page A-31 
 
 
 corresponding to one of the situations [against which an EC-defined GI is 
protected]24 and relating to the same type of pr oduct shall be refused, provided that 
the application for registration of the trade mark was submitted after the date of the 
publication [of the application for registration of the "name"] .   
Trademarks registered in breach of the firs t subparagraph shall be declared invalid.   
This paragraph shall also apply where the application for registration of a trademark 
was lodged before the date of publicati on of the application for registration [of the 
"name"] , provided that that publi cation occurred before the trademark was registered.   
2. With due regard for Community law, use of a trade mark corresponding to 
one of the situations [against which an EC-defined GI is protected]  which was 
registered in good faith before the date on which application for registration of a 
designation of origin or geographica l indication was lodged may continue 
notwithstanding the registration of a designati on of origin or geographical indication, 
where there are no grounds for invalidity or revocation of the trade mark ….   
54. Preambular clause (11) to Regulation No. 692/2003 states:   
 
Article 24(5) of the TRIPS Agreement appli es not only to trademarks registered or 
applied for but also those to which right s have been acquired through use before a 
specified date, notably that of protection of the name in the country of origin [sic] .  
Article 14(2) [of the Regulation]  should therefore be amended:  the reference date 
now specified should be changed to the date of protection in the country of origin or 
of submission of the application for regi stration of the geographical indication or 
designation of origin, depending on whether the name falls under Article 17 or the 
[sic]  Article 5 …;  also, in Article 14(1) … the reference date should become the date 
of application instead of the date of first publication.   
55. Thus, Article 14.1 is amended in Regu lation No. 2081/92#3 so that, where a proposed 
trademark corresponds to one of the situations agai nst which an EC-defined GI is protected for the 
same type of product, the reference date for the determination of whether that trademark may be 
registered becomes the date of application to the Commission for the registration of an EC-defined GI 
rather than the date of first publication by the Commission.    
56. Article 14.2 is amended in Regulation No. 2081/92#3 to provide as follows:   
 
With due regard to Community law, a trad emark the use of which engenders one of 
the situations indicated in Article 13 and wh ich has been applied for, registered, or 
established by use, if that possibility is provided for by the legislation concerned, in 
good faith within the territory of the Commun ity, before either the date of protection 
in the country of origin or the date  of submission to the Commission of the 
application for registration of the designa tion of origin or geographical indication 
may continue to be used notwithstanding th e registration of a designation of origin or 
geographical indication, provided that no gr ounds for its invalidity or revocation exist 
as specified by Council Directive 89/104/EEC of 21 December 1988 to approximate 
the laws of the Member States relating to trade marks
[…] and/or Council Regulation 
(EC) No 40/94 of 20 December 1993 on the Community trade mark[…].   
                                                      
24 See paragraph 24 above.   WT/DS290/R/Add.1 
Page A-32 
 
 
 T. TRADEMARKS OF REPUTATION AND RENOWN  
57. Under Article 14.3, " [an EC-defined GI]  shall not be registered where, in the light of a 
trademark's reputation and renown a nd the length of time it has been used, registration is liable to 
mislead the consumer as to the true identity of the product".   
 
U. THE COMMITTEE OF EC MEMBER STATE REPRESENTATIVES  
58. Under Article 15 of Regulation No. 2081/92, the Commission is to be assisted by a committee 
composed of the representatives of the EC Member  States and chaired by the representative of the 
Commission.  The Commission representative is to submit a draft of the measures to be taken.  The 
committee is to deliver its opinion on the draft by weighted majority voting, and the chair may not 
vote.  The Commission shall adopt the measures envisaged if the measures accord with the 
committee's opinion.  If the measures do not accord with the committee's opinion, or if the committee does not deliver an opinion, the Commission is to submit a proposal to the Ministerial Council, which 
shall act by a qualified majority.  If the Minister ial Council does not act within three months of the 
Commission submitting a proposal, the Commission shall adopt the proposed measure.
25   
 
V. TRANSITIONAL NATIONAL PROTECTION  
59. Under Article 5.5 of Regulation No. 2081/92#2,  an EC Member State may grant transitional 
national "protection in the sense of the present Re gulation" to a proposed EC-defined GI.  "Such 
transitional national protection shall cease on the date  on which a decision on registration under this 
Regulation is taken."   
 
IV. SUMMARY OF AUSTRALIA'S LEGAL CLAIMS 
60. The EC measure diminishes the legal protection for trademarks under the TRIPS Agreement , 
as it:   
 
• prejudices the eligibility of an application for registration of a trademark, contrary to 
TRIPS Article 24.5;   
 
• does not grant to the owner of a registered trademark the exclusive right to prevent all 
third parties not having the owner's consent fro m using in the course of trade identical 
or similar signs for goods which are identical or similar to those in respect of which 
the trademark is registered where such use would result in a likelihood of confusion, 
contrary to TRIPS Article 16.1;   
 
• does not presume a likelihood of confusion in case of use of an identical sign for 
identical goods, contrary to TRIPS Article 16.1;   
 
• unjustifiably encumbers the use of a tradem ark in the course of trade with special 
requirements, contrary to TRIPS Article 20;   
 
• does not assure to WTO Member nationals effective protection against unfair 
competition, contrary to Paris Article 10 bis(1);   
 
• does not assure to WTO Member nationals appropriate effective legal remedies to 
repress acts of unfair competition, contrary to Paris Article 10 ter(1);   
                                                      
25 Article 15 of Regulation No. 2081/92#1 was amended by Regulation No. 806/2003 of 14 April 2003.  
See paragraph 19 above.  The amendments to Article 15 introduced by Regulation No. 806/2003 do not affect 
Australia's claims and arguments in this dispute.    WT/DS290/R/Add.1 
 Page A-33 
 
 
  
• does not make available to trademark ri ght holders civil judicial procedures 
concerning the enforcement of their intell ectual property rights, contrary to TRIPS 
Article 42;   
 
• makes available procedures concerning the enforcement of trademark rights which 
are not fair and equitable, and which are unnecessarily complicated and entail unwarranted delays, contrary to TRIPS Article 41.2;   
 
• does not ensure that decisions on the registration of an EC-defined GI are based only 
on evidence in respect of which trademark right holders were offered the opportunity to be heard, contrary to TRIPS Article 41.3;  and  
 
• does not ensure the availability under its law of enforcement procedures as specified 
in Part III of the TRIPS Agreement  so as to permit effective action against any act of 
infringement of trademark rights, contrary to TRIPS Article 41.1.   
 61. The EC measure does not provide at Community level the legal means for interested parties to 
prevent misleading use of an EC-defined GI or us e which constitutes an act of unfair competition in 
relation to a trademark, contrary to TRIPS Article 22.2.    62. The EC measure does not accord national treatment to the products of other WTO Members, contrary to GATT Article III:4 as well as TBT Article 2.1, or in the protection of intellectual property, 
contrary to TRIPS Article 2.1, incorporating by re ference Paris Article 2, and TRIPS Article 3.1.   
 63. The EC measure is more trade restrictive than  necessary to fulfil a legitimate objective, taking 
account of the risks non-fulfilment would create, contrary to TBT Article 2.2.    64. As a consequence, the EC:   
 
• has not complied with Paris Articles 10 bis and 10 ter, contrary to TRIPS Article 2.1;   
 
• has not given effect to the provisions of the TRIPS Agreement , contrary to TRIPS 
Article 1.1;  and  
 
• has not ensured the conformity of its laws , regulations and administrative procedures 
with its obligations as provided in the anne xed Agreements, contrary to Article XVI:4 
of the WTO Agreement .   
 65. Australia reserves the right to pursue its  claim that the EC measure does not accord 
immediately and unconditionally to the nationals and/or products of each WTO Member any 
advantage, favour, privilege or imm unity granted to the nationals a nd/or products of any other WTO 
Member, contrary to TRIPS Article 4, GATT Article I: 1 and/or TBT Article 2.1, in the event that:   
 
• the EC is applying Community-wide protec tion to EC-defined GIs for foodstuffs and 
agricultural products from another WTO Member;  or  
 
• the EC begins to apply Community-wide pr otection to EC-defined GIs for foodstuffs 
and agricultural products from another WTO Member.   
 
66. Similarly, Australia reserves the right to pursue its claim that the EC measure is not applied in 
a transparent manner, contrary to TRIPS Articles 63. 1 and 63.3, should the EC in fact have in place WT/DS290/R/Add.1 
Page A-34 
 
 
 criteria and/or guidelines for the purposes of making assessments and/or determinations under various 
provisions of Regulation No. 2081/92.    
V. PRELIMINARY ISSUES 
A. A
N EC- DEFINED GI IS GENERALLY A TRIPS- DEFINED GI WITHIN THE MEANING OF ARTICLE 
22.1  OF THE TRIPS  AGREEMENT  
67. Article 22.1 of the TRIPS Agreement  defines geographical indications for the purposes of the 
TRIPS Agreement  as "indications which identify a good as origin ating in the territory of a Member, or 
a region or locality in that territory, where a give n quality, reputation or other characteristic of the 
good is essentially attributable to  its geographical origin".   
 68. A "designation of origin" under Regulation No. 2081/92 must be an actual geographic name 
used to describe an agricultural product or foodstuff,  which must originate in the place identified by 
the geographic name.  The quality or characteristics of the agricultural product or foodstuff must be essentially or exclusively due to a particular geographical environment, and the production, 
processing and preparation of the agricultural produc t or foodstuff must occur in the place identified 
by the geographic name.    69. A "geographical indication" under Regula tion No. 2081/92 must be an actual geographic 
name used to describe an agricultural product or  foodstuff, which must originate in the place 
identified by the geographic name.  A specific qualit y, reputation or other characteristics must be 
attributable to that geographical origin, and production, processing and/or preparation of the 
agricultural product or foodstuff must occur in the place identified by that geographic name.   
 70. Thus, both a "designation of origin" and a "g eographical indication", as these are defined by 
Regulation No. 2081/92, would normally fall within the definition of a "geographical indication" set 
out in TRIPS Article 22.1.  Each constitutes at a minimum an indication "which identif [ies]  a good as 
originating in the territory of a Member, or a region or locality in that territory, where a given quality, 
reputation or other characteristic is essentially attributable to its geographical origin".   
 
VI. THE EC MEASURE IS INCONSISTENT WITH ARTICLES 1.1, 2.1 
(INCORPORATING ARTICLES 10BIS AND 10TER OF THE PARIS CONVENTION 
(1967)), 16.1, 20, 24.5, 41 AND/ OR 42 OF THE TRIPS AGREEMENT 
A. T
HE RELEVANT REQUI REMENTS OF THE TRIPS  AGREEMENT AND OF THE PARIS CONVENTION  
(i) Article 16.1 of the TRIPS Agreement 
71. TRIPS Article 16.126 expressly affords to the owner of a registered trademark an exclusive 
right, that is, a right not possessed or enjoyed by an yone else, to stop or impede all third parties not 
having the owner's consent from using that sign:  (1) in  the course of trade;  (2) in respect of identical 
or similar signs for goods or services identical or sim ilar to those in respect of which the trademark is 
                                                      
26 Article 16.1 of the TRIPS Agreement  provides as follows:   
 
The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner's consent from using in the course of trade identical or similar signs for goods or 
services which are identical or sim ilar 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.  The rights described above shall not 
prejudice any existing prior rights, nor shall they affect the possibility of Members making rights 
available on the basis of use.    WT/DS290/R/Add.1 
 Page A-35 
 
 
 registered;  and (3) where such use would likely be c onfusing.  Further, in case of use of an identical 
sign for identical goods, Article 16.1 provides that a likelihood of confusion is to be presumed.   
 72. The exclusive right to be granted to the owne r of a registered trademark is qualified by TRIPS 
Article 17
27, which allows any WTO Member to provide limited28 exceptions to the rights conferred 
by a trademark.  The provision cites fair use of descriptive terms to illustra te possible exceptions, and 
also requires that such exceptions take account of the legitimate interests of the trademark owner and 
of third parties.  One commentator has said:  "[f] air use of descriptive terms might include indications 
for the purpose of mere identification or informat ion, such as bona fide use of a person's name, 
address or pseudonym, or a geographical name, or an exact indication concerning … origin …".29   
 
(ii) Article 20 of the TRIPS Agreement 
73. TRIPS Article 2030 establishes that no WTO Member may, unjustifiably, impede or restrain 
use of a trademark in the course of trade by speci al requirements and provides illustrative examples of 
such special requirements:  use with another tradem ark;  use in a special form;  or use in a manner 
detrimental to the trademark's capacity to dis tinguish the goods or services of one undertaking from 
those of other undertakings.  Thus, if any WTO Member imposes special requirements on the use of a trademark in the course of trade, those special requirements must be justifiable.    
(iii) Article 24.5 of the TRIPS Agreement 
74. TRIPS Article 24.5
31 defines the boundaries of the range of possible actions open to a WTO 
Member to implement measures relating to TRIPS- defined GIs in relation to trademarks.  TRIPS 
Article 24.5 provides in relevant part that:    
                                                     
 
27 Article 17 of the TRIPS Agreement  provides as follows:   
 Members may provide limited exceptions to the rights  conferred by a trademark, such as fair use of 
descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of 
the trademark and of third parties.   
28 OED , Vol. 1, page 1592, defines "limited" as "fixed", "confined within definite limits" or "restricted 
in scope".   
29 Gervais , page 112.   
30 Article 20 of the TRIPS Agreement  provides as follows:   
 
The use of a trademark in the co urse of trade shall not be unju stifiably encumbered by special 
requirements, such as use with another trademark, us e in a special form or use in a manner detrimental 
to its capability to distinguish the goods or services of one undertaking from those of other 
undertakings.  This will not preclude a requirement pr escribing the use of the trademark identifying the 
undertaking producing the goods or services along with, but without linking it to, the trademark 
distinguishing the specific goods or services in question of that undertaking.   
31 Article 24.5 of the TRIPS Agreement  provides as follows:   
 
Where a trademark has been applied for or registered in good faith, or where rights to a trademark have 
been acquired through use in good faith either:   
 
(a) before the date of application of these provis ions in that Member as defined Part VI:  or  
 
(b) before the geographical indication is protected in its country of origin;   
 measures adopted to implement this Section shall not prejudice eligibility for or the validity of the 
registration of a trademark, or the right to use a trademark, on the basis th at such a trademark is 
identical with, or similar to, a geographical indication.   WT/DS290/R/Add.1 
Page A-36 
 
 
 • measures adopted to implement Section 3 of Part II of the TRIPS Agreement  cannot 
adversely affect the entitlement of an application made in good faith for the 
registration of a trademark on the basis that the trademark is identical with, or similar to, a TRIPS-defined GI;   
 
• measures adopted to implement Section 3 of Part II of the TRIPS Agreement  cannot 
adversely affect the legality of a trademark registered in good faith on the basis that 
the trademark is identical with, or similar to, a TRIPS-defined GI;  and  
 
• measures adopted to implement Section 3 of Part II of the TRIPS Agreement  cannot 
adversely affect the right to use a trad emark to which rights have been acquired 
through use on the basis that the trademark is identical with, or similar to, a TRIPS-
defined GI.   
 
(iv) Article 10bis of the Paris Convention 
75. Under Paris Article 10 bis(1)
32 as incorporated by TRIPS Article 2.1, a WTO Member is 
obliged "to assure to nationals of [WTO Members]  effective protection against unfair competition".  
Paris Article 10 bis(2) defines an act of unfair competition as "[a]ny act of competition contrary to 
honest practices in industrial or commercial matters".   The reference to "honest practices" includes 
practices established in international trade.33   
 
(v) Article 10ter of the Paris Convention 
76. Under Paris Article 10 ter34 as incorporated by TRIPS Article 2.1, a WTO Member is required 
"to assure to nationals of [WTO Members]  appropriate legal remedies effectively to repress all the 
acts referred to in [Paris Article 10bis] ".   
                                                      
32 Article 10 bis of the Paris Convention provides as follows:   
 
(1) The countries of the Union are bound to assu re to nationals of such countries effective 
protection against unfair competition.    
(2) Any act of competition contrary to honest practices in industrial or commercial matters 
constitutes an act of unfair competition.    
(3) The following in particular shall be prohibited:   
  1. all acts of such a nature as to creat e confusion by any mean s whatever with the 
establishment, the goods, or the industrial or commercial activities, of a competitor;   
  2. false allegations in the course of tr ade of such a nature as to discredit the 
establishment, the goods, or the industrial or commercial activities, of a competitor;   
 
  3. indications or allegations the use of whic h in the course of trade is liable to mislead 
the public as to the nature, the manufacturing pr ocess, the characteristics, the suitability for 
their purpose, or the quantity, of the goods.   
33 Bodenhausen , page 144, states:  "[t]his criterion is not limited to honest practices existing in the 
country where protection against unfair competition is sought.  The judicial or administrative authorities of such country will therefore al so have to take into account honest practi ces established in international trade".   
34 Article 10 ter of the Paris Convention provides as follows:   
 (1) The countries of the Union undertake to assure to nationals of other countries of the Union 
appropriate legal remedies effectively to repress all the acts referred to in Articles 9, 10, and 10bis.   
  WT/DS290/R/Add.1 
 Page A-37 
 
 
 (vi) Article 41 of the TRIPS Agreement 
77. TRIPS Article 4135 establishes general obligations for WTO Members in matters concerning 
the enforcement of intellectual property rights "so as to permit effective action against any act of 
infringement of intellectual propert y rights covered by this Agreemen t …".  These general obligations 
include, pursuant to TRIPS Article 41.1, to have av ailable to right holders enforcement procedures as 
set out in Part III of the TRIPS Agreement , including civil judicial procedures concerning the 
enforcement of intellectual property rights, expe ditious remedies to prevent infringements, and 
remedies which constitute a deterrent to further infri ngements.  Pursuant to TRIPS Article 41.2, such 
procedures are to be fair and equitable, may not be unnecessarily complicated or costly and may not 
entail unreasonable time limits or unwarranted delays.  Pursuant to TRIPS Article 41.3, decisions on 
the merits of a case are to be based only on evid ence in respect of which parties to the proceeding 
were offered the opportunity to be heard.  Pursuant  to TRIPS Article 41.4, parties to a proceeding are 
to have an opportunity for review by a judicial aut hority of at least the legal aspects of initial judicial 
decisions on the merits of a case.   
                                                                                                                                                                     
(2) They undertake, further, to provide measures to permit federations and associations 
representing interested industrialists , producers, or merchants, provid ed that the existence of such 
federations and associations is not contrary to the laws  of their countries, to take action in the courts or 
before the administrative authorities, with a view to the repression of the acts referred to in Article 9, 
10, and 10bis, in so far as the law of the country in which protection is claimed allows such action by 
federations and associations of that country.   
35 Article 41 of the TRIPS Agreement  provides as follows:   
 
1. Members shall ensure that enfo rcement procedures as specified in  this Part are available under 
their law so as to permit effective action against any act of infringement of intellectual property rights 
covered by this Agreement, including expeditious remedies to prevent infringements and remedies which constitute a deterrent to further infringements.   These procedures shall be applied in such a 
manner as to avoid the creation of barriers to leg itimate trade and to provide for safeguards against 
their abuse.    
2. Procedures concerning the en forcement of intellectual property rights shall be fair and 
equitable.  They shall not be unnecessarily complicat ed or costly, or entail unreasonable time-limits or 
unwarranted delays.   
 
3. Decisions on the merits of a case shall preferably be in writing and reasoned.  They shall be 
made available at least to the partie s to the proceeding without undue delay.  Decisions on the merits of 
a case shall be based only on evidence in respect of which parties were offered the opportunity to be 
heard.    
4. Parties to a proceedin g shall have an opportunity for review  by a judicial authority of final 
administrative decisions and, subject to jurisdictional provisions in a Member's law concerning the importance of a case, of at least the legal aspects of initial judicial decisions on the merits of a case.  
However, there shall be no obligation to provide an opportunity for review of acquittals in criminal 
cases.   
 
5. It is understood that this Part does not cr eate any obligation to put in  place a judicial system 
for the enforcement of intellectual property rights di stinct from that for the enforcement of law in 
general, nor does it affect the capacity of Members to enforce their law in general.  Nothing in this Part 
creates any obligation with respect  to the distribution of resour ces as between enforcement of 
intellectual property rights and the enforcement of law in general.   WT/DS290/R/Add.1 
Page A-38 
 
 
 (vii) Article 42 of the TRIPS Agreement 
78. TRIPS Article 4236 obliges WTO Members to make available to right holders "civil judicial 
procedures" for matters touching on or relating to the enforcement of any intellectual property right 
covered by the Agreement.  Having regard to the ordinary meaning of the words in context, TRIPS 
Article 42 requires a WTO Member to make available court or other legal processes:  in particular, 
such procedures may not be political.37  In addition, TRIPS Article 42 expressly provides for certain 
rights which are to be granted to right holders unde r such judicial procedures, such as representation 
by independent legal counsel, and to  substantiate their claims and to present relevant evidence.   
 
(viii) Articles 1.1 and 2.1 of the TRIPS Agreement 
79. TRIPS Article 1.138 obliges WTO Members to give effect to the provisions of the Agreement.  
It provides that Members may introduce more exte nsive protection for intellectual property than 
required by the Agreement, but only if that more extensive protection does not otherwise conflict with 
or infringe any provisions of the Agreement.    
80. TRIPS Article 2.1
39 obliges WTO Members to comply with Articles 1 through 12, and 
Article 19, of the Paris Convention (1967).    B. T
HE EC MEASURE PREJUDICES THE ELIGIBILITY OF AN APPLICATION FOR REGISTRATION OF A 
TRADEMARK , CONTRARY TO ARTICLE  24.5  OF THE TRIPS  AGREEMENT  
81. Article 14.1 of Regulation No. 2081/92#1 requi red that, where an EC-defined GI was 
registered, an application for registration of a trad emark for the same type of product as that bearing 
the EC-defined GI corresponding to a situation ag ainst which a registered EC-defined GI was 
protected under the Regulation was to be refused (o r a subsequent trademark registration invalidated) 
if:   
 
• the application for registration of the trad emark was lodged after the date of first 
publication by the Commission of the appli cation for registration of the EC-defined 
GI;  or  
                                                      
36 Article 42 of the TRIPS Agreement  provides as follows:   
 
Members shall make available to right holders[footnote omitted] civil judicial procedures concerning the 
enforcement of any in tellectual property right covered by this Agreement.  Defendants shall have the 
right to written notice which is timely and contains sufficient detail, including the basis of the claims.  
Parties shall be allowed to be represented by independent legal counsel, and procedures shall not impose overly burdensome requirements concerning mandatory personal appearances.  All parties to 
such procedures shall be duly entitled to substantiate their claims and to present all relevant evidence.  
The procedure shall provide a means to identify and protect confidential information, unless this would be contrary to existing co nstitutional requirements.   
37 OED , Vol.1, page 408, defines "civil" in relevant part  as:  "9.  Of law, a legal process, etc.:  not 
criminal, political, or (formerly) ecclesias tical;  relating to private relations between members of a community".   
38 Article 1.1 of the TRIPS Agreement  provides as follows:   
 
Members shall give effect to the provisions of this  Agreement.  Members may,  but shall not be obliged 
to, implement in their law more extensive protection than is required by this Agreement, provided that 
such protection does not contravene the provisions of this Agreement.  Members shall be free to determine the appropriate method of implementing the provisions of this Agreement within their own 
legal system and practice.   
39 Article 2.1 of the TRIPS Agreement  provides as follows:   
 
In respect of Parts II, III and IV of this Agreemen t, Members shall comply w ith Articles 1 through 12, 
and Article 19, of the Paris Convention (1967).    WT/DS290/R/Add.1 
 Page A-39 
 
 
  
• the application for registration of the trad emark was lodged before the date of first 
publication by the Commission of the appli cation for registration of the EC-defined 
GI but that publication occurred before the trademark was registered.   
 
82. Article 14.1 of Regulation No. 2081/92#3 requir es that, where an application for registration 
of a trademark for the same type of product as a re gistered EC-defined GI corresponds to a situation 
against which a registered EC-defin ed GI is protected under the Regulation, that application is to be 
refused (or a subsequent registration invalidated) if that application is made after an application for 
registration of an EC-defined GI has been lodged with the Commission.  The date an application for 
registration of an EC-defined GI is lodged with the Commission thus became in all circumstances the 
decisive date for determining whether a trademar k for the same type of product which involves a 
situation against which a registered EC-defined GI is protected may be registered.    83. Regulation Nos 2081/92#1 and 2081/92#3 are "m easures adopted to implement this Section" 
within the meaning of TRIPS Article 24.5, estab lishing a regime for the protection of GIs as 
contemplated by Section 3 of Part II of the TRIPS Agreement .   
 84. Further, Article 14.1 of Regulation Nos 2081/92#1 and 2081/92#3 applies to a situation in 
which an application for registration of a trademar k concerns the same type of product for which an 
EC-defined GI is later registered and use of the trademark will give rise to a situation against which 
an EC-defined GI is otherwise protected under Article  13.1 of the Regulation.  Under Article 13.1, an 
EC-defined GI is protected, inter alia , against "any … commercial use of a name registered in respect 
of products not covered by the registration in so fa r as those products are comparable to the products 
registered under that name …".  Thus, the situations  against which products bearing a registered EC-
defined GI are protected include situations in whic h the trademark being applied for is identical with, 
or similar to, a TRIPS-defined GI within  the meaning of TRIPS Article 24.5.   
 85. However, Paris Article 4, and in pa rticular paragraph B of that provision,
40 incorporated by 
TRIPS Article 2.1, requires that a WTO Member afford a right of priority of six months in respect of 
an application for registration of a trademark for wh ich an application for registration had previously 
been filed in another WTO Member.  Thus, having re gard to the provisions of Paris Article 4, where a 
trademark has been applied for in another WTO Memb er and an application for registration of that 
trademark within the EC is made consistently w ith the provisions of Paris Article 4, the later 
registration by the EC of an EC-defined GI cannot by itself constitute a basis for refusing that application for – or invalidating – the registration of  a trademark.  Such a trademark application or 
registration can only be refused or invalidated fo r other valid reasons consistent with the EC's 
domestic legislation and relevant WTO obligations, fo r example, because use of that trademark in the 
EC market would be misleading.   
                                                     
 
40 Article 4 of the Paris Convention (1967) provides in relevant part:   
A. –  (1) Any person who has duly filed an application … for the registration … of a 
trademark, in one [WTO Member]  … shall enjoy, for the purpose of filing in [other WTO Members] , a 
right of priority during the periods hereinafter fixed.   
…   
B. –  Consequently, any subsequent filing in any of the other [WTO Members]  before the 
expiration of the periods referred to above shall not  be invalidated by reas on of any acts accomplished 
in the interval, in particular, another filing … or the use of the mark, and such acts cannot give rise to 
any third-party right or any right of personal possession.  Rights acquired by third parties before the date of the first application that serves as the basi s for the right of priority are reserved in accordance 
with the domestic legislation of each [WTO Member] .   
C. –  (1) The periods of priority referred to above shall be … six months for … 
trademarks.   
 (2) These periods shall start from the date of filing of the first application;  …   
…   WT/DS290/R/Add.1 
Page A-40 
 
 
 86. Article 14.1 of Regulation No. 2081/92#1 did not afford the right of priority in respect of an 
application for registration of a trademark previous ly filed in another WTO Member required to be 
granted by Paris Article 4 where that trademark is id entical with or similar to an EC-defined GI which 
is later registered.  By not doing so, Article 14.1 of Regulation No. 2081/92#1 prejudiced, or 
adversely affected,41 the eligibility for registration of a trademark for which an application had been 
made in good faith, contrary to TRIPS Article 24.5.    87. Similarly, Article 14.1 of Regulation No. 2081/ 92#3 does not afford the right of priority in 
respect of an application for registration of a tr ademark previously filed in another WTO Member 
required to be granted by Paris Article 4 where that trademark is identical with or similar to an EC-
defined GI which is later registered.  By not doing so, Article 14.1 of Regulation No. 2081/92#3 
continues to prejudice, or adversely affect, the elig ibility for registration of a trademark for which an 
application has been made in good faith , contrary to TRIPS Article 24.5.   
 C. T
HE EC MEASURE DOES NOT GRANT THE OWNER OF A REGISTERED TRADEMARK THE RIGHTS 
REQUIRED TO BE GRANTED BY ARTICLE  16.1  OF THE TRIPS  AGREEMENT  
(i) The EC measure does not provide for an obj ection from the owner of a registered 
trademark to be admissible in the event of a likelihood of confusion between a 
registered trademark and a proposed EC-defin ed GI, contrary to Article 16.1 of the 
TRIPS Agreement 
88. TRIPS Article 16.1 sets out the minimum right  required to be conferred on the owner of a 
registered trademark:  the exclusive right to prev ent all third parties not having the owner's consent 
from using in the course of trade identical or simila r signs for goods or services which are identical or 
similar to those in respect of which the trademar k is registered where such use would result in a 
likelihood of confusion.  TRIPS Article 16.1 also  expressly provides a presumption of a likelihood of 
confusion in case of use of an identical sign for iden tical goods or services.  Yet that right can only be 
exercised when the owner of a registered trad emark has a means through which to pursue it.   
 89. Under Article 7.4 of Regulation No. 2081/92# 1, a statement of objection to the proposed 
registration of an EC-defined GI from within the EC "shall be admissible only
 if it" shows non-
compliance with the definition of an EC-defined GI , "shows that the proposed registration of a name 
would jeopardize the existence of an entirely or partly identical  name or trade mark  or the existence of 
products which are legally on the market at the time of publication of this regulation in the [Official 
Journal] ", or shows that the proposed name is generic in nature ( emphases added ).   
 90. Under Article 7.4 of Regulation No. 2081/92#2,  which remains in effect, a statement of 
objection to the proposed registration of an EC-def ined GI from within the EC "shall be admissible 
only
 if it" shows non-compliance with the definition of  an EC-defined GI, "shows that the registration 
of the name proposed would jeopardize the ex istence 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 
preceding the date of publication of [the application for registration of the name] ", or shows that the 
proposed name is generic in nature ( emphases added ).   
 
91. In addition, in accordance with Articles 12b.3 and 12d.2 of Regula tion No. 2081/92#3, the 
provisions of Article 7.4 of Regul ation No. 2081/92#2 determine the admissibility of statements of 
objection:    
• in respect of applications for the registration of an EC-defined GI relating to a 
geographical location in the territory of another WTO Member;  and  
                                                     
 
41 OED , Vol. II, p.2333.  In the context of its usage in Article 24.5, "prejudice" is defined as "affect 
adversely or unfavourably;  injure or impair the validity of (a right, claim, etc)".    WT/DS290/R/Add.1 
 Page A-41 
 
 
  
• from nationals of other WTO Members in respect of applications for the registration 
of EC-defined GIs from within the EC.   
 However, requiring that the existence of an entirel y or partly identical trademark be jeopardised 
imposes conditions for the enjoyment of ri ghts required to be conferred by the TRIPS Agreement  not 
contemplated by or otherwise justified under the TRIPS Agreement  or any other provision of the WTO 
Agreement .   
92. The EC measure does not ensure the admissibility of an objection from the owner of a 
registered trademark on the grounds that a proposed  EC-defined GI would constitute use of an 
identical or similar sign for identical or similar goods  that would result in a likelihood of confusion.  
As a consequence, the EC measure did not – and does not – provide a right required to be granted to 
the owner, contrary to TRIPS Article 16.1.    
(ii) The EC measure does not provide for a presumption of a likelihood of confusion in 
the case of use of an identical sign for iden tical goods, contrary to Article 16.1 of the 
TRIPS Agreement 
93. As noted above,
42 TRIPS Article 16.1 establishes a pres umption of a likelihood of confusion 
in the case of use of an identical sign for identi cal goods.  The EC measure does not implement this 
presumption, contrary to that provision.    
(iii) The EC measure does not ensure – in the event of a likelihood of confusion between a 
registered trademark and a proposed EC-defin ed GI – that an objection from the 
owner of a registered trademark is consid ered by the Committee of EC Member State 
representatives, contrary to Artic le 16.1 of the TRIPS Agreement 
94. As well as not ensuring the admissibility of an objection from the owner of a registered 
trademark seeking to enforce rights require d to be conferred under TRIPS Article 16.1,
43 the EC 
measure does not ensure that an objection from the owne r of a registered trademark will be considered 
by the ultimate decision-maker, being the Comm ittee of EC Member State representatives.   
 95. The Court of First Instance of the European  Court of Justice has found, in respect of 
Regulation No. 2081/92#1 and 2081/92#2:   
 
…  Article 7(1) of Regulation No 2081/92 gran ts only to the Member States the right 
to raise objections to registration before th e Commission.  …  [U]nder Article 7(3) … 
any legitimately concerned natural or le gal person may … object to the proposed 
registration … by sending a … statement to … the Member State in which he resides 
or is established.  That provision does not require the Member State concerned to 
forward to the Commission the objection thus  stated to it, but merely to take the 
necessary measures to consider the objection …
44   
96. The Court of First Instance further found that the Commission "may not consider an objection 
communicated to it by any person other than a Member State".45   
 
97. These provisions were not am ended in Regulation No. 2081/92 #3, and the Court's findings 
concerning the interpretation to be applied to Artic le 7 of the Regulation remain valid.  Thus, the 
                                                      
42 See paragraph 88 above.   
43 See paragraph 92 above.   
44 The Canard judgment, Exhibit COMP-12, paragraph 45.   
45 The Canard judgment, Exhibit COMP-12, paragraph 50.   WT/DS290/R/Add.1 
Page A-42 
 
 
 owner of a registered trademark resident or estab lished in an EC Member State must send "a duly 
substantiated statement to the competent authority of the Member State in which he resides or is 
established" (Article 7.3).  However, as found by the Court, there is no obligation on the EC Member 
State concerned to forward the statement of obj ection to the Commission, and the Commission "may 
not consider an objection communicated to it by any person other than a Member State".   
 98. In addition, in accordance with Articles 12b.2 and 12d.1 of Regula tion No. 2081/92#3, the 
owner of a registered trademark resident or est ablished in another WTO Member must send "a duly 
substantiated statement to the country in which it resides or is established, which shall transmit it … 
to the Commission".  Consistent with the rationale of  the findings of the Court of First Instance in the 
Canard judgment, there is no obligation, nor indeed  can there be in such circumstances, on another 
WTO Member government to forward an objection to the Commission.  At the same time, Regulation 
No. 2081/92#3 does not empower the Commission to  consider an objection communicated to it by 
any person other than an EC Member State, or another WTO Member government or third country 
meeting the equivalence and reciprocity cond itions established by Article 12 of Regulation 
No. 2081/92#3.   
 99. Whether an objection is from the owner of a registered trademark who is resident or 
established in either an EC Member State or another WTO Member, however, that objection must be received by the Commission in order to be cons idered by the Committee of EC Member State 
representatives.  Ensuring that an objection from the ow ner of a registered trademark is considered by 
the ultimate decision maker is essentia l to such an owner being able to exercise the rights required to 
be conferred by TRIPS Article 16.1.  Yet the EC measure fails to ensure that an objection from the 
owner of a registered trademark is considered by the Committee of EC Member  State representatives.  
Thus, the EC measure has not granted – and does not grant – the rights required to be granted to such 
owners by TRIPS Article 16.1, c ontrary to that provision.   
 
(iv) The EC measure does not grant to the own er of a registered trademark – in the event 
of a likelihood of confusion between a registered trademark and a proposed EC-
defined GI – the exclusive right required to be granted by Article 16.1 of the TRIPS 
Agreement 
100. Article 14.2 of Regulation No. 2081/92#1 provide d that a trademark registered in good faith 
before the date on which an application for regist ration of an EC-defined GI was lodged and whose 
use involved one of the situations against which an  EC-defined GI was protected under the Regulation 
could continue to be used "notwithstanding the registration of [an EC-defined GI] ".   
 
101. Article 14.2 of Regulation No. 2081/92#3 provid es that a trademark which has been applied 
for, registered, or established by use in good faith w ithin the territory of the Community before either 
the date of protection in the country of origin or the date an application to the Commission for 
protection of an EC-defined GI and whose use invo lves one of the situations against which an EC-
defined GI is protected under the Regulation can con tinue to be used "notwithstanding the registration 
of [an EC-defined GI] ".   
 
102. The EC measure establishes a presumption of co-existence between an existing trademark and 
a later registered EC-defined GI.  The Regul ation presumes co-existence by providing   
 
• for the continued use of a registered trademark (Regulation No. 2081/92#1) or a 
trademark (Regulation No. 2081/92#3) " notwithstanding the registration of [an EC-
defined GI] " (Article 14.2);  and  
 
•
 that the only ground to refuse an application for the registration of an EC-defined GI 
that otherwise complies with the requirements of the Regulation is where, because of  WT/DS290/R/Add.1 
 Page A-43 
 
 
 a trademark's reputation and renown and the length of time it has been used, 
consumers are likely to be misled as to the tr ue identity of the product (Article 14.3).   
 103. However, nothing in the TRIPS Agreement  – whether in Section 3 of Part II of the 
Agreement, or elsewhere – justifies a WTO Member's  failure to grant to the owner of a registered 
trademark the exclusive right required to be gran ted by TRIPS Article 16.1:  to prevent all third 
parties not having that owner's consent from using in  the course of trade identical or similar signs for 
goods which are identical or similar to those in r espect of which the trademark is registered where 
such use would result in a likelihood of confusion.   
 
104. The Appellate Body has previously found that  had the negotiators of a covered agreement 
intended to permit WTO Members to act inconsis tently with a provision of another covered 
agreement, they would have said so explicitly.
46  Australia submits that such reasoning is even more 
compelling when considered in the context of a singl e covered agreement.  Had the negotiators of the 
TRIPS Agreement  intended that the exclusive rights requi red to be conferred on the owner of a 
registered trademark under TRIPS Article 16.1 coul d be negated or otherw ise limited by another 
provision of that same covered agreement, they w ould have expressly said so.  Indeed, the negotiators 
did precisely that in TRIPS Article 17.  It is theref ore inconceivable to Australia that the provision of 
Section 3 of Part II of the TRIPS Agreement  – which do not contain any express provisions allowing 
the exclusive right required to be granted to the owner of a registered trademark under TRIPS 
Article 16.1 to be negated or otherwise limited – c ould nevertheless be interpreted in such a way as to 
permit such negation or other limitation.    105. Together with TRIPS Articles 22.3 and 23.2, TRIPS Article 24.5 defines the boundary 
between a WTO Member's right to implement m easures relating to TRIPS-defined GIs and its 
obligation to afford protection to trademarks.  TRIPS Article 24.5 expressly provides that where a 
trademark has been registered in good faith, measures adopted to implement Section 3 of Part II of the 
TRIPS Agreement  "shall not
 prejudice … the validity of the registration of a trademark … on the basis 
that such a trademark is identical with, or similar to, a [TRIPS-defined GI] ".  Thus, where a trademark 
is registered in good faith before measures adopt ed to implement Section 3 of Part II of the TRIPS 
Agreement  that could otherwise have prevented that tr ademark's registration are in place, the validity 
of that registration cannot be prejudiced or adversely affected on the basis that it is identical or similar 
to a TRIPS-defined GI.    106. Further, TRIPS Article 24.5 does not in an y way require or permit any negation or other 
limitation of the exclusive right required to be c onferred on the owner of that registered trademark 
pursuant to TRIPS Article 16.1.  The owner's excl usive right to prevent all unauthorised use of 
identical or similar signs for identical or similar goods that would result in a likelihood of confusion 
cannot be affected by measures adopted by a WTO Me mber to implement Section 3 of Part II of the 
TRIPS Agreement .   
 107. The regime of co-existence established by Ar ticle 14.2 of Regulation No. 2081/92 negates or 
repudiates the exclusive right required to be gran ted by TRIPS Article 16.1 to the owner of a 
registered trademark to prevent all unauthorised use of an identical or similar sign for identical or 
similar goods that would result in a likelihood of conf usion.  The EC measure is therefore contrary to 
TRIPS Article 16.1.    
D. T
HE EC MEASURE UNJUSTIFIABLY ENCUMBERS THE USE OF A TRADEMARK IN THE COURSE OF 
TRADE WITH SPECI AL REQUIREMENTS , CONTRARY TO ARTICLE 20 OF THE TRIPS  AGREEMENT  
108. Regulation No. 2081/92#1 effectively require d co-existence of an existing registered 
trademark and a later registered EC-defined GI .  Similarly, Regulation No. 2081/92#3 effectively 
                                                      
46 EC – Bananas , paragraph 157.   WT/DS290/R/Add.1 
Page A-44 
 
 
 requires the co-existence of a trademark – whether re gistered or established through use – and a later 
registered EC-defined GI.47   
 109. TRIPS Article 20 provides, in part, that the u se of a trademark in the course of trade shall not 
be unjustifiably encumbered – or burdened without good cause – by special requirements, such as use 
in a manner detrimental to its capability to distin guish the goods or services of one undertaking from 
those of other undertakings.  In today's world of  transboundary markets and marketing, the potential 
economic value of a trademark which is capable of distinguishing the goods or services of one 
undertaking from those of other undertakings is great er than ever.  Thus, TRIPS Article 20 establishes 
a requirement that a WTO Member may not without good cause impose conditions on the use of a 
trademark such that there is a risk of the tradem ark's distinctiveness, and thus its economic value, 
being eroded.  Further, TRIPS Article 20 applies to both registered and unregistered trademarks.
48   
 110. By requiring co-existence of a trademark and a la ter registered EC-defined GI that consists of 
or contains an identical or similar sign for iden tical or similar goods notwithstanding a likelihood of 
confusion,
49 the EC measure has the effect of diminishing the distinctiveness, and hence the economic 
value, of an affected trademark.  Requiring a tr ademark to be used in a market place where there 
exists the use of identical or similar signs for identical or similar goods that would result in a 
likelihood of confusion (such as a co-existent EC-d efined GI) encumbers or burdens the use of a 
trademark "in a manner detrimental to its capability to distinguish the goods … of one undertaking 
from those of other undertakings" within the meaning of TRIPS Article 20.   
 111. Moreover, encumbering use of a trademark through a requirement of co-existence or concurrent use with an identical or similar EC-defined GI for iden tical or similar goods is neither 
required nor permitted by the provisions of Section 3 of Part II of the TRIPS Agreement , and in 
particular TRIPS Article 24.5.  It is thus not justified by good cause within the meaning of TRIPS 
Article 20.    112. Accordingly, the EC measure unjustifiably encumbers by special requirements use of a 
trademark in the course of trade in a manner detrim ental to its capability to distinguish the goods of 
one undertaking from those of other undertak ings, contrary to TRIPS Article 20.   
 
E. T
HE EC MEASURE DOES NOT ASSURE EFFECTIVE PROTECTION AGAINST UNFAIR COMPETITION , 
CONTRARY TO ARTICLE  2.1 OF THE TRIPS  AGREEMENT INCORPORATING ARTICLE  10BIS(1) 
OF THE PARIS CONVENTION (1967) 
113. Under Paris Article 10 bis(1) as incorporated by TRIPS Article 2.1, a WTO Member is 
obliged to provide to nationals of WTO Members effective protection against unfair competition.  
Having regard to the broad scope of Paris Article 1(2), the obligation to provide protection against 
unfair competition under Paris Article 10 bis(1) must include effective protection of trademarks from 
acts relating to indications of source as well as effective protection of indications of source from acts relating to trademarks.    
114. Regulation No. 2081/92 establishes a Community -wide system of registration and protection 
of EC-defined GIs that provides effective protec tion from acts of unfair competition, including in 
relation to later trademark appli cations, within the Community.  However, the Regulation does not 
provide a Community-wide system of effective protection of trademarks from acts of unfair competition arising from the later registration of EC-defined GIs under the Regulation.   
 
                                                     
 
47 See paragraph 102 above.   
48 See, for example, Gervais , page 116.   
49 See paragraph 102 above.    WT/DS290/R/Add.1 
 Page A-45 
 
 
 115. Accordingly, the EC measure is inconsistent  with the EC's obligation pursuant to Paris 
Article 10 bis(1), as incorporated by TRIPS Article 2.1,  to assure to nationals of WTO Members 
effective protection against unfair competition.    
F. T
HE EC MEASURE DOES NOT ASSURE APPROPRI ATE LEGAL REMEDIES TO REPRESS 
EFFECTIVELY ACTS REFERRED TO IN ARTICLE  10BIS OF THE PARIS CONVENTION (1967),  
CONTRARY TO ARTICLE  2.1 OF THE TRIPS  AGREEMENT INCORPORATING ARTICLE  10TER(1) 
OF THE PARIS CONVENTION (1967) 
116. Paris Article 10 ter(1) as incorporated by TRIPS Article 2.1 requires that a WTO Member 
assure to nationals of WTO Members appropriate le gal remedies to repress effectively all acts of 
unfair competition referred to in Paris Article 10 bis.  Those legal remedies include legal remedies to 
repress acts of unfair competition against trademarks arising from acts involving indications of source.    117. Notwithstanding that Regulation No. 2081/92 establishes a system of Community-wide 
registration and protection of EC-defined GIs, it does not provide for appropriate legal remedies to 
repress effectively at a Community-wide leve l acts of unfair competition, including against 
trademarks, arising from the registration or the pr oposed registration of an EC-defined GI.   
 118. Accordingly, the EC measure is inconsistent  with the EC's obligations pursuant to Paris 
Article 10 ter(1), as incorporated by TRIPS Article 2.1, to assure to nationals of WTO Members 
appropriate legal remedies to repress effectivel y acts of unfair competition referred to in Paris 
Article 10 bis.   
 G. T
HE EC MEASURE DOES NOT MAKE AVAILABLE TO TRADEMARK RIGHT HOLDERS CIVIL 
JUDICIAL PROCEDURES CONCERNING THE ENFO RCEMENT OF THEIR INTELLECTUAL PROPERTY 
RIGHTS , CONTRARY TO ARTICLE  42 OF THE TRIPS  AGREEMENT  
119. The obligation established by TRIPS Article 42 is straightforward.  A WTO Member is 
required to "make available to right holders civil judicial procedures concerning the enforcement of 
any intellectual property right covered by this Agreem ent".  Having regard to the ordinary meaning of 
the words, civil judicial procedures are court or other legal processes normally presided over by a 
judge:  they may not be political or administrative processes.50  Such an interpretation is supported as 
well by the provisions of TRIPS Articles 43-48, wh ich refer to authorities to be granted to the 
"judicial authorities".    120. That civil judicial procedures for the enforc ement of an intellectual property right covered by 
the TRIPS Agreement  are required to be court or other le gal processes presided over by a judge is 
confirmed when considered in light of footnote  4 to TRIPS Article 23.1 concerning TRIPS-defined 
GIs for wines and spirits.  Footnote 4 provides that "[n]otwithstanding the first sentence of Article 42, 
WTO Members may, with respect to these oblig ations, instead provide for enforcement by 
administrative action".  Thus, in accordance with footnote 4, WTO Members may enforce intellectual 
property rights relating to TRIPS-defined GIs fo r wines and spirits by administrative action.  
However, by the absence of a qualifying referen ce in TRIPS Article 42 in the same terms as 
                                                     
 
50 OED , Vol.1, defines:   
 "civil" in relevant part as "Of law, a legal pro cess, etc;  not criminal, political, or (formerly) 
ecclesiastical;  relating to private relations betw een member of a community" (page 408);  and  
 "judicial" in relevant part as "Of or pertaining to proceedings in a court of law;  of or pertaining to the 
administration of justice;  resulting from or fixed by a judgement in court.  Of law:  enforced by secular 
judges and tribunals" (page 1459).   WT/DS290/R/Add.1 
Page A-46 
 
 
 footnote 4, it is clear that TRIPS Article 42 requir es WTO Members to provide for the enforcement of 
other covered intellectual prope rty rights only through a cour t or other legal process.   
 121. In addition, TRIPS Article 42 expressly provid es for certain rights to be granted to parties 
under the civil judicial procedures, such as the right  to be represented by independent legal counsel, 
and to substantiate claims and to present relevant evidence.   
 122. Regulation No. 2081/92 does not provide to trad emark right holders civil judicial procedures 
at the Community level for the enforcem ent of their intellectual property rights vis-à-vis  the 
registration of EC-defined GIs.  The Committee of  EC Member State representatives – which decides 
both applications for the registration of an EC-def ined GI and the enforcement of the rights of a 
trademark owner in relation to a proposed EC-defin ed GI – consists of officials from EC Member 
State agencies responsible for implementing Regul ation No. 2081/92 at national level.  And, if 
necessary, the enforcement of the rights of a tradem ark owner in relation to the proposed registration 
of an EC-defined GI is ultimately decided by EC  Member State Ministers responsible for domestic 
agriculture policies and programs or the Commission's  Directorate-General for Agriculture.  Further, 
Article 7.5 of Regulation No. 2081/92 expressly provides that where an objection is admissible, "the Commission shall ask the Member States concerne d to seek agreement among themselves …".  None 
of these processes are civil judicial procedures.    
123. That Regulation No. 2081/92 does not provide civil judicial procedures as required was 
essentially confirmed in the Canard judgment when the Court of First Instance of the European Court 
of Justice found that "Article 7(1) … grants only to  the Member States the right to raise objections to 
registration before the Commission" and that th e Commission "may not consider an objection 
communicated to it by any person other than a Member State".
51   
 
124. Further, even if a trademark right holder is  successful in having its objection considered by 
the Committee of EC Member State representatives,52 Regulation No. 2081/92 does not provide a 
right to be represented by independe nt legal counsel before that Committee, or a right to substantiate 
claims or to present relevant evidence.    
125. Accordingly, Regulation No. 2081/92 does not make  available to trademark right holders civil 
judicial procedures concerning the enforcement of a c overed intellectual property right, or the right to 
be presented by independent legal counsel, or the ri ght to substantiate their claims or to present 
relevant evidence, contrary to TRIPS Article 42.    
H. T
HE PROCEDURES CONCERNING THE ENFO RCEMENT OF TRADEMARK RIGHTS MADE 
AVAILABLE BY THE EC MEASURE ARE INCONSISTENT WITH ARTICLE  41.2  OF THE TRIPS  
AGREEMENT  
(i) The EC measure does not make available fair and equitable procedures for the 
enforcement of intellectual property rights, contrary to Article 41.2 of the TRIPS Agreement 
126. TRIPS Article 41.2 requires in relevant part that "[p]rocedures concerning the enforcement of 
intellectual property rights shall be fair and equitable".  Even if the Panel does not accept Australia's 
claim that the EC measure is inconsistent with TRIPS Article 42 (and instead finds that the EC 
measure does make available to trademark right holde rs civil judicial procedures for the enforcement 
                                                     
 
51 The findings of the Court of First Instance remain valid as the provisions of Article 7 of Regulation 
No. 2081/92 on which the Court based its findings were not amended by Regulation No. 2081/92#3.  See 
paragraph 95 above.   
52 See paragraphs 92 and 99 above.    WT/DS290/R/Add.1 
 Page A-47 
 
 
 of their rights), Australia submits that the enforc ement procedures made available are not fair and 
equitable.    127. An objection by a trademark right holder reside nt or established in an EC Member State is 
first dealt with by the EC Member State ag encies responsible for implementing Regulation 
No. 2081/92 at a national level.
53   
 128. Many of those EC Member State agenci es are also responsible for making the initial 
assessment of applications for the proposed regist ration of an EC-defined GI and for implementing 
domestic agricultural policies and programs within the EC Member States, of which Regulation No. 
2081/92 forms an integral part.  Australia submits that EC Member State agencies with either or both such roles are likely to have an interest in supporting and promoting the proposed registration of a 
geographic term from within that EC Member State as an EC-defined GI.    129. Yet it is with those very EC Member State agencies that a statement of objection from a 
trademark right holder resident or established in an EC Member State may have to be lodged.  
Further, the EC measure does not require an EC Me mber State to forward that statement of objection 
to the Commission for consideration by the Commi ttee of EC Member State representatives, "but 
merely to take the necessary measures to consider the objection".
54   
 
130. Australia submits that requiring or permitting an objection that aims to protect the interests of 
a trademark right holder to be lodged with an agency  that is likely to have an interest in supporting 
and promoting the registration of an EC-defined GI is a procedure that is neither fair nor equitable.   
 131. If an EC Member State agency does forward a statement of objection from a trademark right 
holder to the Commission, it is then considered by the Committee of EC Member State 
representatives.  Yet that Committee comprises delega tes of the same EC Member State agencies 
which are likely to have an interest in supportin g and promoting the proposed registration of EC 
Member State geographic terms as EC defined GIs.    132. Thus, a situation exists in which the enfo rcement of the rights of a trademark owner in 
relation to the proposed registration of an EC-def ined GI is decided – whether at officials or 
Ministerial level, or ultimately by the Commission's Directorate-General for Agriculture – by the very 
Member States and their agencies which:  (1) consid ered that a proposed geographical name meets the 
requirements of Regulation No. 2081/92;  and (2) must presumably therefore support the application in the Committee of EC Member State representatives.  Australia submits that this is a procedure that 
is neither fair nor equitable within the meani ng of TRIPS Article 41.2 insofar as trademark right 
holders are concerned.    133. In addition, Article 7.5 of  Regulation No. 2081/92 expressly provides that where an objection 
is admissible, "the Commission shall ask the Me mber States concerned to seek agreement among 
themselves …" in the first instance.  Australia subm its that, at the very least, the possibility of "deal-
making" between EC Member States irrespective of the interests of a trademark right holder cannot be 
excluded in such circumstances.  Once again, such process is neither fair nor equitable within the 
meaning of TRIPS Article 41.2 insofar as trademark right holders are concerned.    134. A trademark right holder who is not resident or  established in an EC Member State is in no 
better situation.  Such a trademark right holder must rely upon the goodwill of another WTO Member 
government, which has no obligation or incentive in th e matter, to forward its statement of objection 
to the Commission.  Even if such a trademark right holder's statement of objection is forwarded to the 
                                                     
 
53 See Exhibit AUS-01 for the full list of EC  Member State agencies, downloaded from 
http://www.europa.eu.int/comm/agriculture/foodqual/protec/national/index_en.htm  (last visited 20 April 2004).   
54 See paragraph 95 above.   WT/DS290/R/Add.1 
Page A-48 
 
 
 Commission, it faces the generally deficient situati on already outlined in respect of statements of 
objection from trademark right holders resident or estab lished in an EC Member State.  In addition, a 
trademark right holder not resident or established in an EC Member State faces the additional hurdle 
of not having a national representative on the Co mmittee of EC Member State representatives to 
speak for its interests.   
 135. Australia submits that the process for enforcem ent of a trademark right provided by the EC 
measure for a right holder not resident or establis hed in an EC Member State is not a fair and 
equitable procedure.  The EC measure requires an y objection to be considered by a group of 
representatives that are likely to have an interest in the registration of the proposed EC-defined GI at 
issue as well as interests corresponding to the nationa l interests of the EC Member States.  In such 
circumstances, the possibility of bias in favour of bo th the proposed EC-defined GI and the interests 
of EC Member States cannot be seen to be excluded.   Australia further submits that the possibility of 
bias against the interests of a trademark right hold er is even stronger where an objection concerns a 
proposed EC-defined GI relating to a geographical location within an EC Member State and the 
trademark right holder is not an EC national.   
 136. The process provided by the EC measure for the consideration of the rights of trademark 
holders resident or established in the EC gives ri se to real and significant questions concerning the 
potential for conflicts of interest in the Committ ee of EC Member State representatives.  The EC 
measure thus does not provide fair and equitable pr ocedures for the enforcement of trademark right as 
required by TRIPS Article 41.2.    
(ii) The procedures for the enforcement of trade mark rights made available by the EC 
measure are unnecessarily complicated and en tail unwarranted delays, contrary to 
Article 41.2 of the TRIPS Agreement 
137. TRIPS Article 41.2 requires in relevant pa rt that procedures for the enforcement of 
intellectual property right not be unnecessarily complicated or entail unwarranted delays.   
 138. Even if the EC measure is not considered to  be inconsistent with TRIPS Article 42, requiring 
that statements of objection from trademark right holders be lodged through the competent authority 
of an EC Member State or through another WTO Member government adds unjustifiable complexity 
and delay to the process of exercising the rights required to be granted to trademark right holders under the TRIPS Agreement .  If a trademark has been registered or rights to a trademark have been 
acquired through use within the territory of the EC, the owner of that trademark has rights within the 
EC that do not directly concern either an EC Member State government or any other WTO Member 
government.  There is no good reason wh y another government need be involved, but by doing so the 
EC measure adds complexity and delay to the pro cess of exercising trademark rights within the EC.  
Further, in the case of a non-EC national not resident  or established in an EC Member State, the very 
fact of having to make a request to another WTO Member government exacerbates the complexity 
and delay associated with exercising a trademark right,  even if that government is willing and able to 
act on behalf of that trademark owner.   
 
139. The preambular provisions of the TRIPS Agreement  expressly recognise that intellectual 
property rights are private rights.  As such, making the ability of a right holder to exercise or enforce such rights dependent on the willingness and/or abil ity of an otherwise unconcerned government to 
act is not supported by good cause and thus cannot be justified.   
 
140. Accordingly, Regulation No. 2081/92 does not make available to trademark right holders 
procedures for the enforcement of intellectual prope rty rights which are not unnecessarily complicated 
or entail unwarranted delays, contrary to TRIPS Article 41.2.     WT/DS290/R/Add.1 
 Page A-49 
 
 
 I. DECISIONS ON THE REGISTRATION OF EC- DEFINED GIS UNDER THE EC MEASURE ARE NOT 
BASED ONLY ON EVIDENCE IN RESPECT OF WHICH TRADEMARK RIGHT HOLDERS WERE 
OFFERED THE OPPORTUNITY TO BE HEARD , CONTRARY TO ARTICLE  41.3  OF THE TRIPS  
AGREEMENT  
141. TRIPS Article 41.3 requires that decisions on  the merits of a case "be based only on evidence 
in respect of which parties were offe red the opportunity to be heard".   
 142. The Court of First Instance of the European  Court of Justice has found that, under Regulation 
No. 2081/92#1 and 2081/92#2, only EC Member States have the right to raise objections to 
registration before the Commission, and that the Commission "may not consider an objection 
communicated to it by any person other than a Member State".
55  The Court's decision confirmed that 
decisions on the registration of EC-defined GIs could be made without the Commission necessarily 
having to provide to trademark right holders the opportunity to be heard.  Further, the Court's findings concerning the meaning of Article 7 of the Regula tion remain valid, as the provisions of Article 7 
were not amended by Regulation No. 2081/92#3.   
 
143. Regulation No. 2081/92#3 introduced a right of  objection for trademark right holders who 
were resident or established in another WTO Member.  However, by requiring pursuant to 
Articles 12b.2(a) and 12d.1 of the Regulation that such trademark right holders lodge their objections with the government of that other WTO Member, the Regulation does not guarantee to such holders 
the right to communicate their objections to the Co mmission.  In such circumstances, the EC measure 
does not guarantee that the Committee of EC Me mber State representatives makes decisions based 
only on evidence in respect of which a concerned trademark right holder was offered the opportunity 
to be heard.    
144. Accordingly, because the EC measure does not ensure that:   
 
• a trademark right holder's objections will always be admissible in the event of a 
likelihood of confusion between a register ed trademark and a proposed EC-defined 
GI;
56  or  
 
• a trademark right holder's objections will be considered by the Committee of EC 
Member State representatives;57   
 
the EC measure does not ensure that decisions on the me rits of a case, that is, whether to register an 
EC-defined GI, are based only on evidence in respect of which any holder of a trademark right in part 
or all of the territory of the EC was offered the opportunity to be heard, contrary to TRIPS 
Article 41.3.   
J. THE EC HAS NOT ENSURED THE AVAILABILITY  UNDER ITS LAW OF ENFORCEMENT 
PROCEDURES AS SPECIFIED IN PART III OF THE TRIPS  AGREEMENT SO AS TO PERMIT 
EFFECTIVE ACTION AGAINST ANY ACT OF INFR INGEMENT OF TRADEMARK RIGHTS AS 
REQUIRED BY ARTICLE  41.1  OF THAT AGREEMENT  
145. TRIPS Article 41.1 requires WTO Members to  "ensure that enforcement procedures as 
specified in this Part are available under their law so as to permit effective action against any act of 
infringement of intellectual property rights cove red by this Agreement, including expeditious 
remedies to prevent infringements and remedi es which constitute a deterrent to further 
infringements".   
                                                      
55 See paragraph 95 above.   
56 See paragraph 92 above.   
57 See paragraph 99 above.   WT/DS290/R/Add.1 
Page A-50 
 
 
 146. TRIPS Article 41 is the first provision of Part III of the TRIPS Agreement  headed 
"Enforcement of Intellectual Property Rights.  Part III comprises five Sections as follows:   
 
• Section 1 "General Obligations":  comprising Article 41 itself;   
 
• Section 2 "Civil and Administrative procedures and Remedies":  comprising 
 
o Article 42 "Fair and Equitable Procedures",  
 
o Article 43 "Evidence",  
 
o Article 44 "Injunctions",  
 
o Article 45 "Damages",  
 
o Article 46 "Other Remedies",  
 
o Article 47 "Right of Information",  
 
o Article 48 "Indemnification of the Defendant",  
 
o Article 49 "Administrative Procedures";   
 
• Section 3 headed "Provisional Measures":  comprising Article 50;   
 
• Section 4 headed "Special Requirements Related to Border Measures":  comprising  
 
o Article 51 "Suspension of Release by Customs Authorities",  
 
o Article 52 "Application",  
 
o Article 53 "Security or Equivalent Assurance",  
 
o Article 54 "Notice of Suspension",  
 
o Article 55 "Duration of Suspension",  
 
o Article 56 "Indemnification of the Importe r and of the Owner of the Goods",  
 
o Article 57 "Right of Inspection and Information,  
 
o Article 58 "Ex Officio Action",  
 
o Article 59 "Remedies",  
 
o Article 60 "De Minimis Imports";   
 
 and 
• Section 5 headed "Criminal Procedures":  comprising Article 61.   
 147. Thus, TRIPS Article 41.1 establishes an obliga tion on WTO Members to make available – in 
respect of any act of infringement of in tellectual property rights encompassed by the TRIPS 
Agreement  – the enforcement procedures set out in Part III of that Agreement.  However, Regulation  WT/DS290/R/Add.1 
 Page A-51 
 
 
 No. 2081/92 does not make available to right holder civil judicial procedures concerning the 
enforcement of any intellectual property right co vered by this Agreement as required by TRIPS 
Article 42.  Even if the Panel were to consider  that the EC measure is consistent with TRIPS 
Article 42, Regulation No. 2081/92 establishes the Co mmittee of EC Member State representatives as 
the ultimate decision-making body for the enforcem ent of trademark rights in the circumstances 
covered by that Regulation, but does not grant that Committee the authority:   
 
• as required by and consistent with TRI PS Article 43, to order the production of 
evidence by an opposing party;   
 
• as required by and consistent with TRIPS Artic le 44, to order a party to desist from an 
infringement;   
 
• as required by and consistent with TRIPS Ar ticle 45, to order an infringer to pay 
damages to a trademark right holder;   
 
• as required by and consistent with TRIPS Ar ticle 46, to order that goods found to be 
infringing be disposed of outside the channels of commerce;  and 
 
• as required by and consistent with TRIPS Ar ticle 48, to order indemnification of the 
defendant.   
 148. As a consequence of the EC measure's failure:    
• to provide fair and equitable procedures fo r the enforcement of a trademark holder's 
rights in relation to the registration of an EC-defined GI under the EC measure as required by TRIPS Article 41.2;   
 
• to ensure that procedures fo r the enforcement of a trademark holder's rights in relation 
to the registration of an EC-defined GI under the EC measure are not unnecessarily complicated or do not entail unwarranted delays as required by TRIPS Article 41.2;   
 
• to provide that decisions on the merits of a case involving the proposed registration of 
an EC-defined GI shall be based only on ev idence in respect of which any holder of a 
trademark right in part or all of the territory of the EC was offered the opportunity to be heard as required by TRIPS Article 41.3;   
 
• to make available to trademark right holders civil judicial procedures at the 
Community level concerning the enforcem ent of an intellectual property right 
covered by the TRIPS Agreement , as required by TRIPS Article 42;   
 
• to provide to trademark right holders the ri ght to be represented by independent legal 
counsel in any enforcement proceedings, to s ubstantiate their claims and to present all 
relevant evidence, as required by TRIPS Article 42;   
 
• to provide to judicial authorities the authority required to be conferred on them by 
TRIPS Articles 43, 44, 45, 46, 48 and 49 in respect of the enforcement of trademark rights vis-à-vis the proposed registration of an EC-defined GI;   
 the EC has not ensured that enforcement pr ocedures as specified in Part III of the TRIPS Agreement  
are available under its law so as to permit effectiv e action at the Community level against any act of 
infringement of intellectual property rights cove red by the Agreement, contrary to TRIPS 
Article 41.1.   WT/DS290/R/Add.1 
Page A-52 
 
 
 K. THE EC MEASURE DIMINISHES THE LEGAL PRO TECTION FOR TRADEMARKS IN RESPECT OF 
DECISIONS BY EC MEMBER STATES TO GRANT TRANSITIONAL NATIONAL PROTECTION , 
CONTRARY TO ARTICLES  2.1 (INCORPORATING ARTICLES  10BIS(1) AND 10TER(1) OF THE 
PARIS CONVENTION (1967)),  16.1,  41.1,  41.2,  41.3  AND /OR 42 OF THE TRIPS  AGREEMENT  
149. In the same way that the EC measure diminishes the legal protection for trademarks under the 
TRIPS Agreement  in respect of the registration of EC-d efined GIs at Community level, the EC 
measure diminishes the legal protection for trademarks under the TRIPS Agreement  in respect of 
decisions by EC Member States to grant transitiona l national protection pursuant to Article 5.5 of 
Regulation No. 2081/92#2.   
 
150. Under Article 5.5 of Regulation No. 2081/92# 2, an EC Member State "may, on a transitional 
basis only, grant on the national level a protection in the sense of the present Regulation" to proposed 
EC-defined GIs from that Member State.  Howeve r, while providing for a Member State to grant 
transitional national protection pending the outcome of the application for registration of an EC-
defined GI at the Community level, the Regulation does not ensure that such decisions are made by a 
Member State with proper regard to the relevant provisions of the TRIPS Agreement .  As a 
consequence, the Regulation does not, in respect of  such decisions, require a Member State:   
 
• to grant to the owner of a registered tradem ark 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 which are identical or  similar to those in respect of which the 
trademark is registered where such use would result in a likelihood of confusion or to 
establish a presumption of a likelihood of confusion in case of the use of an identical sign for identical goods, contrary to TRIPS Article 16.1;   
 
• to assure effective protection against unfair competition as required by Paris 
Article 10 bis(1) or to assure appropriate legal remedies to repress effectively acts of 
unfair competition as required by Paris Article 10 ter(1), contrary to TRIPS 
Article 2.1;   
 
• to make available to trademark right holde rs civil judicial procedures concerning the 
enforcement of their intellectual property ri ghts, contrary to TRIPS Article 42;   
 
• to make available fair and equitable pro cedures for the enforcement of intellectual 
property rights, contrary to TRIPS Article 41.2;   
 
• to make available procedures for the enfo rcement of an intellectual property right 
which are not unnecessarily complicated or which do not entail unwarranted delays, 
contrary to TRIPS Article 41.2;   
 
• to make decisions on the grant of trans itional national protection which are based 
only on evidence in respect of which pa rties to a proceeding were offered the 
opportunity to be heard, contrary to TRIPS Article 41.3;  and  
 
• to ensure the availability under EC Member  State laws of enforcement procedures as 
specified in Part III of the TRIPS Agreement  so as to permit effective action against 
any act of infringement of intellectual prope rty rights covered by that Agreement, 
contrary to TRIPS Article 41.1.   
  WT/DS290/R/Add.1 
 Page A-53 
 
 
 L. THE EC HAS NOT GIVEN EFFECT TO THE PROVISIONS OF THE TRIPS  AGREEMENT OR 
COMPLIED WITH THE SPECIFIED PROVISIONS OF THE PARIS CONVENTION (1967),  CONTRARY 
TO ARTICLES  1.1 AND 2.1 OF THE TRIPS  AGREEMENT  
151. As a consequence of its failure to comply with Paris Articles 10 bis(1) and 10 ter(1) in respect 
of decisions to register EC-defined GIs at the Co mmunity level and in respect of decisions by EC 
Member States to grant transitional national prot ection, the EC measure is inconsistent with 
Article 2.1 of the TRIPS Agreement .   
 152. Similarly, as a consequence of the EC  measure's inconsistency with Articles 2.1 
(incorporating by reference Paris Articles 10 bis(1) and 10 ter(1)), 16.1, 20, 24.5, 41.1, 41.2, 41.3 
and/or 42 in respect of decisions to register EC-def ined GIs at the Community level and in respect of 
decisions by EC Member States to grant transitional national protection, the EC has failed to give effect to the provisions of the TRIPS Agreement , as required by Article 1.1 of that Agreement.   
 M. C
ONCLUSION  
153. The EC measure establishes a regime for th e registration and protection of EC-defined GIs 
that systematically undermines and/or fails to  protect adequately the rights required by the TRIPS 
Agreement  to be granted in respect of trademarks.  The EC measure diminishes legal protection for 
trademarks by:    
• prejudicing the eligibility of an application for registration of a trademark, contrary to 
TRIPS Article 24.5;   
 
• not granting to the owner of a registered tr ademark the rights required to be granted 
by TRIPS Article 16.1, contrary to that provision;   
 
• not establishing a presumption of likelihood of confusion in the case of use of an 
identical sign for identical goods, contrary to TRIPS Article 16.1;   
 
• unjustifiably encumbering the use of a trademark in the course of trade with special 
requirements, contrary to TRIPS Article 20;   
 
• not assuring effective protection agains t unfair competition as required by Paris 
Article 10 bis(1) and not assuring appropriate legal remedies to repress effectively acts 
referred to in Paris Article 10 bis as required by Paris Article 10 ter(1), contrary to 
TRIPS Article 2.1;   
 
• not making available to trademark right holde rs civil judicial procedures concerning 
the enforcement of their intellectual property rights, contrary to TRIPS Article 42;   
 
• not making available fair and equitable pro cedures for the enforcement of intellectual 
property rights, contrary to TRIPS Article 41.2;   
 
• making the limited procedures which are ava ilable for the enforcement of intellectual 
property rights unnecessarily complicated and s ubject to unwarranted delays, contrary 
to TRIPS Article 41.2;   
 
• making decisions on the registration of EC-d efined GIs which are not based only on 
evidence in respect of which parties to a proceeding were offered the opportunity to 
be heard, contrary to TRIPS Article 41.3;   
 WT/DS290/R/Add.1 
Page A-54 
 
 
 • not ensuring the availability under its law of  enforcement procedures as specified in 
Part III of the TRIPS Agreement  so as to permit effective action against any act of 
infringement of intellectual property rights covered by that Agreement, contrary to 
TRIPS Article 41.1;   
 
• not ensuring that EC Member State decisions  to grant transitional national protection 
under Article 5.5 of Regulation No. 2081/9 2#2 accord with the EC's obligations 
under TRIPS Articles 2.1 (incorporating Paris Articles 10 bis(1) and 10 ter(1)), 16.1, 
41.1, 41.2, 41.3 and 42;   
 
• not giving effect to the provisions of th e Paris Convention (1967), contrary to TRIPS 
Article 2.1;  and  
 
• not giving effect to the provisions of the TRIPS Agreement , contrary to TRIPS 
Article 1.1.   
 
VII. THE EC MEASURE IS INCONSISTENT WITH ARTICLES 1.1 AND 22.2 OF THE 
TRIPS AGREEMENT 
A. IN RESPECT OF EC- DEFINED GIS, THE EC MEASURE DOES NOT PROVI DE THE LEGAL MEANS 
FOR INTERESTED PARTIES TO PREVENT MISLEADI NG USE OR USE WHICH CONSTITUTES UNFAIR 
COMPETITION , CONTRARY TO ARTICLE  22.2  OF THE TRIPS  AGREEMENT  
154. Article 22.258 of the TRIPS Agreement  requires a WTO Member to provide, "in respect of 
geographical indications", that is, "as concerns" 59 TRIPS-defined GIs, legal channels for interested 
parties to prevent use which misleads the public as to the geographical origin of a good or use which 
constitutes an act of unfair competition within the meaning of Paris Article 10 bis.  The obligation is 
not limited to actions to protect TRIPS-defined GI s, but extends to any situation that concerns  TRIPS-
defined GIs, including a situation involving the proposed registration of an EC-defined GI that 
potentially constitutes an act of unfair competition within the meaning of Paris Article 10 bis.   
 
155. Regulation No. 2081/92 establishes a Communi ty-wide regime for the registration and 
protection of EC-defined GIs.  However, the EC measure does not provide – as concerns those same 
EC-defined GIs – legal channels for interested pa rties to prevent on a Commu nity-wide basis any use 
of those EC-defined GIs which would mislead the public as to the geographical origin of a good or any use which would constitute an act of unfair co mpetition within the meaning of Paris Article 10 bis.  
The EC measure is thus inconsiste nt with TRIPS Article 22.2.   
 
                                                     
 
58 Article 22.2 of the TRIPS Agreement  provides as follows:   
 
In respect of geographical indications, Members shall provide the legal means for interested parties to 
prevent:   
 (a) the use of any means in the designation or presentation of a good that indicates or suggests 
that the good in question originates in a geographical area othe r than the true place of origin in 
a manner which misleads the public as to the geographical origin of the good;   
(b) any use which constitutes an act of unfair co mpetition within the meani ng of Article 10bis of 
the Paris Convention (1967).   
59 OED , Vol. 2, page 2565.    WT/DS290/R/Add.1 
 Page A-55 
 
 
 B. THE EC HAS NOT GIVEN EFFECT TO THE PROVISIONS OF THE TRIPS  AGREEMENT AS 
REQUIRED BY ARTICLE  1.1 OF THAT AGREEMENT  
156. As a consequence of the EC measure's  inconsistency with Article 22.2 of the TRIPS 
Agreement , the EC has failed to give effect to the provisions of that Agreement as required by TRIPS 
Article 1.1.   
 
VIII.  THE EC MEASURE IS INCONSISTENT WITH ARTICLE III:4 OF GATT 1994 AND 
ARTICLES 1.1 AND 1.3, 2.1 (INCORPORATING ARTICLE 2 OF THE PARIS CONVENTION (1967)) AND 3.1 OF THE TRIPS AGREEMENT 
A. T
HE EC MEASURE ACCORDS TO THE PRODUCTS OF ANOTHER WTO  MEMBER TREATMENT 
LESS FAVOURABLE THAN THAT IT ACCORDS TO LIKE PRODUCTS OF NATIONAL ORIGIN , 
CONTRARY TO ARTICLE  III:4  OF GATT  1994 
(i) The relevant requirements of Article III:4 of GATT 199460 
157. In Korea – Beef , the Appellate Body said:   
 
For a violation of Article III:4 to be estab lished, three elements must be satisfied:  
that the imported and domestic products at is sue are "like products";  that the measure 
at issue is a "law, regulation, or requiremen t affecting their internal sale, offering for 
sale, purchase, transportation, distribution, or use";  and that the imported products are accorded "less favourable" treatment than that accorded to like domestic 
products.
61   
158. In EC – Asbestos , the Appellate Body said:   
 
…  [The approach for analyzing "likeness"]  has … consisted of employing four 
general criteria in analyzing "likeness":  (i ) the properties, nature and quality of the 
products;  (ii) the end-uses of the products;  (iii) consumers' tastes and habits – more 
comprehensively termed consumers' percep tions and behaviour – in respect of the 
products;  and (iv) the tariff classification of the products.[…]  …62   
159. In EC – Bananas , the Appellate Body said:   
 
…  The ordinary meaning of the word "a ffecting" implies a measure that has "an 
effect on", which indicates a broad scope of application.  This interpretation is … 
reinforced by the conclusions of previous panels that the term "affecting" in the 
context of Article III of the GATT is wider in scope than such terms as "regulating" 
or "governing".[…] 63   
160. In Korea – Beef , the Appellate Body said:  "[w]hether or not imported products are treated 
'less favourably' than like domestic products shoul d be assessed … by examining whether a measure 
                                                      
60 Article III:4 of GATT 1994 provides:   
 
The products of the territory of any contracting party imported into the territory of any other contracting party shall be accorded treatment no less fa vourable than th at accorded to like products of 
national origin in respect of all laws, regulations a nd requirements affecting their internal sale, offering 
for sale, purchase, transportation, distribution or use.  …   
61 Korea – Beef , paragraph 133.   
62 EC – Asbestos , paragraph 101.   
63 EC – Bananas , paragraph 220.   WT/DS290/R/Add.1 
Page A-56 
 
 
 modified the conditions of competition  in the relevant market to th e detriment of imported products"64  
(emphasis in original) .  Further, in US – FSC (Article 21.5) , the Appellate Body said:  "[t]he 
examination of whether a measure involves 'less fa vourable treatment' of impor ted 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 … 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" 65  
(emphasis in original) .   
 
(ii) The EC measure relates to imported and domestically produced "like products" 
within the meaning of Article III:4 of GATT 1994 
161. As set out in Article 1.1 of Regulation No. 2081/92#3, EC-defined GIs may be registered and 
protected in respect of any:  agricultural products  intended for human consumption referred to in 
Annex I to the Treaty establishing the European Commun ity;  foodstuffs referred to in Annex I to the 
Regulation;  and other agricultural products referred  to in Annex II of the Regulation.  From within 
these products, only wine products and spirit drinks ar e excluded from the scope of the Regulation (as 
GI registration and protection for wine products and spirit drinks is provided for under separate 
legislation).  Further, in accordance with Article 12.1, the Regulation "may apply to an agricultural 
product or foodstuff from a third country …".    
162. However, the products in respect of which an EC-defined GI may be registered remain 
subject to the provisions of Article III:4 of GATT 1994.  Thus, within the meaning of GATT 
Article III:4, for example:  imported apples and pear s would be like products  to "Savoie" apples and 
pears;  imported oysters would be like products to "W hitstable" oysters;  imported olive oils would be 
like product to the many olive oils for which an EC-defined GI has been registered;  and imported 
trout would be like product with "Black Forest" trout.
66   
 
(iii) The EC measure is a law affecting the inter nal sale or offering for sale of imported 
products which are like products to products of EC origin within the meaning of 
Article III:4 of GATT 1994 
163. Council Regulation No. 2081/92, including as amended, provides the integrated regulatory 
framework for the measure at issue in this dispute.  Pursuant to Article 249 of the Treaty Establishing 
the European Community, "[a] regulation shall have general application.  It shall be binding in its 
entirety and directly applicable in all Member States".67  Thus, Regulation No. 2081/92 is a law within 
the meaning of Article III:4 of GATT 1994.    
164. Further, the EC measure affects the internal  sale and/or offering for sale of imported products 
which are like products to domestically produced pr oducts within the meaning of GATT Article III:4 
in at least two ways.  Firstly, if an EC-defined GI  from another WTO Member is to benefit within the 
EC domestic market from the Community-wide prot ection made available by Regulation No. 2081/92 
and/or from the esteem purportedly attached to foodstu ffs or agricultural products with an identifiable 
geographical origin
68, then that EC-defined GI must be re gistered pursuant to the Regulation.  
Secondly, imported products being so ld or offered for sale within the EC may not bear a registered 
EC-defined GI – whether from within the EC or  from another WTO Member – even where that 
                                                      
64 Korea – Beef , paragraph 137.   
65 US – FSC (Article 21.5) , paragraph 215.   
66 See Regulation No. 1107/96 at Exhibit COMP-3.a.   
67 A consolidated version of the Treaty is  available on the Europa website at http://europa.eu.int/eur-
lex/en/treaties/dat/EC_consol.pdf  (last visited 21 April 2004).   
68 See, for example the preambular paragraphs to Regulation No. 2081/92#1.    WT/DS290/R/Add.1 
 Page A-57 
 
 
 registered EC-defined GI is the common name for a product in the country of origin and/or in the 
course of trade.    
(iv) EC-defined GIs for imported products are accorded less favourable treatment than 
EC-defined GIs for like domestic products, contrary to Article III:4 of GATT 1994 
165. Article 12.1 of Regulation No. 2081/92#3 provi des that the Regulation may apply to an 
agricultural product or foodstuff from another WTO Member if:    
• "the [WTO Member]  is able to give guarantees iden tical or equivalent to those 
referred to in Article 4 [re product specification] ";   
 
• "the [WTO Member]  concerned has inspection arrangements and a right to objection 
equivalent to those laid down in this Regulation";  and  
 
• "the [WTO Member]  concerned is prepared to provid e protection equivalent to that 
available in the Community to corresponding agricultural products for [sic]  
foodstuffs coming from the Community".   
 
166. Article 12.1 of Regulation No. 2081/92#3 set s out a broad requirement for reciprocal 
protection to the level provided in the EC of an y "corresponding" products of EC origin, although the 
precise meaning of the requirement is not clear to  Australia.  Australia notes that, in the French 
version of the Regulation, the reference in the fi nal requirement of Article  12.1 is to "corresponding 
agricultural products or
 foodstuffs coming from the Community".69  Australia assumes that the 
English version of the Regulation should read "or"  instead of "for", having regard to the overall 
content and context of the Regulation.  At the same time, Australia notes that the French version does not clarify the meaning of "corresponding" in relati on to "agricultural products or foodstuffs coming 
from the Community".  It is arguable that "corr esponding" has a general effect, requiring reciprocal 
treatment for a wide range of products.   
 
167. Ultimately, however, it is not necessary to determine the precise meaning of "corresponding" 
agricultural products of foodstuffs in the contex t of Article 12.1 of Regulation No. 2081/92#3.  
Having regard to the ordinary meaning of "corresponding"
70 and the context of its use, Australia 
believes it reasonable to assume that use of the expr ession "corresponding" products in Article 12.1 of 
the Regulation encompasses at least  "like products" in the sense of GATT Article III:4.  Thus, for 
example, an EC-defined GI from Australia for an a pple is only able to be registered and protected 
under the Regulation if Australia is prepared to provi de protection equivalent to that provided in the 
EC for all EC-defined GIs from within the EC for apples.   
 168. Thus, Article 12.1 of Regulation No. 2081/ 92#3 imposes on imported products distinct 
additional requirements to which domestic like products are not subj ect.  Further, these additional 
requirements significantly modify the conditions of competition for imported products vis-à-vis 
domestic like products in the EC market.  Unl ess another WTO Member is willing and able:   
 
• to give identical or equivalent guarant ees concerning the product specification;   
                                                     
 
69 The final requirement of Article 12.1 of the French version of Regulation No. 2081/92 reads in 
relevant part:   
 
que le pays tiers concerné soit disposé à accorder une protection équivalente à celle existant dans la 
Communauté, aux produits agricoles ou aux denrées alimentaires correspondants provenant de la Communauté.   
70 OED , Vol.1, page 517, defines "corresponding" in relevant part as "[t]hat corresponds to something 
else;  analogous, equivalent, proportional".   WT/DS290/R/Add.1 
Page A-58 
 
 
  
• to have in place inspection arrangements and a right of objection equivalent to those 
laid down in the Regulation;  and  
 
• to grant protection equivalent protection to that available in the EC to corresponding 
products from the EC;   
 EC-defined GIs from that WTO Member are unable to be registered and protected for imported 
products under Regulation No. 2081/92#3 in the EC market.   
169. In US – Section 211 Appropriations Act , the Appellate Body cited with approval the statement 
by the panel in US – Section 337  that "while the likelihood of havi ng to defend imported products in 
two fora is small, the existence of the possibility is  inherently less favourable than being faced with 
having to conduct a defence in only one of these fora".
71   
 170. Regulation No. 2081/92#3, however, imposes the reality – not just the possibility – of equivalence and reciprocity requirements for the re gistration and protection of EC-defined GIs for 
imported products additional to th ose faced by like domestic products bearing an EC-defined GI.  
Using the words of the Appellate Body's findings in Korea – Beef ,
72 Regulation No. 2081/92 
categorically "modifie [s] the conditions of competition in the [EC]  market to the detriment of 
imported products".    171. Accordingly, Regulation No. 2081/92#3 accord s to the products of other WTO Members 
bearing an EC-defined GI less favourable treatment than that acc orded to like domestic products 
bearing an EC-defined GI, contrary to GATT Article III:4.    
(v) An EC-defined GI from another WTO Memb er may only be registered in the EC in 
respect of an imported like product if that other WTO Member deems the 
requirements of Regulation No. 2081/92#3 to be satisfied, thus according less 
favourable treatment to imported products  contrary to Article III:4 of GATT 1994 
172. Article 12a.2 of Regulation No. 2081/92#3 provides:  "[i]f [the WTO Member in whose 
territory the EC-defined GI is located]  deems the requirements of this Regulation to be satisfied it 
shall transmit the registration application to the Commission …".  Article 12.3 provides that "[t]he Commission shall examine, at the request of the  [WTO Member] concerned, [in the Committee of EC 
Member State representatives]  whether [the WTO Member]  satisfies the equivalence conditions and 
offers guarantees within the meaning of paragra ph 1 as a result of its national legislation".  
Articles 12.3 and 12a read together establish a require ment that the other WTO Member in which that 
EC-defined GI is located "pre-approve" each and every application for registration.   
 
173. Through the operation of Articles 12a.2 an d 12.3 read together, Regulation No. 2081/92#3 
significantly modifies the conditions of competiti on for imported products vis-à-vis domestic like 
products in the EC market.
73  The Regulation imposes on products imported into the EC a distinct and 
additional requirement that another WTO Member "deems the requirements of [the Regulation]  to be 
satisfied" before imported products bearing an EC-defined GI can benefit from Community-wide 
protection for that EC-defined GI under the Regulation.   Again, having regard to the Appellate Body's 
findings in US – Section 211 Appropriations Act ,74 the additional hurdle to the registration of EC-
defined GIs from another WTO Member – the requi rement that the WTO Member in which the EC-
                                                      
71 US – Section 211 Appropriations Act , paragraph 263, referring to the panel report in US – Section 
337, paragraph 5.18-9.   
72 See paragraph 160 above.   
73 Korea – Beef , paragraph 137, see paragraph 160 above.   
74 See paragraph 169 above.    WT/DS290/R/Add.1 
 Page A-59 
 
 
 defined GI is located deem that the requirements of Regulation No. 2081/92#3 have been met – is a 
reality, not just a possibility.    174. Any outward appearance of symmetry of treatme nt for applications for registration of an EC-
defined GI from another WTO Member in fact mask s a fundamentally different situation.  The EC 
and its Member States have legally defined rights an d obligations in relation to each other and to EC 
Member State nationals.  Few other WTO Memb er governments have such legally defined 
relationships affecting the maintenance and enfor cement of an intellectual property right expressly 
recognised as a private right by the TRIPS Agreement .   
 
175. Regulation No. 2081/92 thus accords to the pr oducts of other WTO Members bearing an EC-
defined GI less favourable treatment than that accorded to like domestic products bearing an EC-
defined GI, contrary to GATT Article III:4.    
(vi) The EC measure as a whole accords less favourable treatment to imported products 
bearing an EC-defined GI than to like dom estic products bearin g an EC-defined GI, 
contrary to GATT Article III:4 
176. Regulation No. 2081/92#3 provides an integrat ed regulatory framework for the registration 
and protection of EC-defined GIs that systemically accords to imported products bearing an EC-defined GI less favourable treatment than that accorded to like domestic products bearing an EC-
defined GI.   
 177. From the outset, the registration of EC-defined GIs for imported products is subject to requirements additional to those that apply to th e registration of EC-defined GIs for like domestic 
products.  In addition to satisfying the Regulati on's requirements concerning product specifications 
and inspection structures that apply to domestic like products, before impor ted products may benefit 
from registration of an EC-defined GI for a ge ographic location in another WTO Member, their 
producers and/or importers are subject to and/or must overcome:    
• the EC's inability to state clearly what is required by Article 12 of Regulation No. 
2081/92#3;   
 
• the EC's inability to state the decision-making criteria that would govern the 
assessments required to be made under Article 12 of the Regulation;   
 
• another WTO Member's willingness or ability even to consider offering guarantees 
identical or equivalent to those referred to in Article 4 of the Regulation;   
 
• whether another WTO Member has in place inspection arrangements equivalent to 
those required by Article 10 of the Regulation;   
 
• the EC's determination of whether anot her WTO Member provides a "right to 
objection" equivalent to that laid down in the Regulation;   
 
• another WTO Member's willingness and/or ability "to provide protection equivalent 
to that available in the Community to corresponding agricultural products or 
foodstuffs coming from the Community";   
 
• another WTO Member's willingness and/or ability to consider and/or assess each 
application to register an EC-defined GI for a geographical location in that WTO Member;  and  
 WT/DS290/R/Add.1 
Page A-60 
 
 
 • finally and particularly, that the outcome of the application is to be determined 
through a process, that is, the Committee of EC Member State representatives, in 
which:   
 
o there is no representative or advocate for the registration of an EC-defined GI 
for an imported product;  and  
 
o there is no requirement for procedural fairness, due process and/or 
transparency concerning that Committee's decision-making process.   
 
178. Further, the disadvantage to imported products  bearing an EC-defined GI from a geographic 
location in another WTO Member is cumulative.  Each and every one of the additional requirements 
or barriers must be satisfied before an EC-defin ed GI for a geographical location in another WTO 
Member can be registered in respect of an impor ted product.  Moreover, t hose additional requirements 
or barriers would normally be considered to c onstitute governmental functions beyond the ability of 
an individual producer to satisfy.   
 179. A careful analysis of the fundamental thrust and effect of the EC measure as a whole and of 
its implications in the marketplace
75 shows that the EC measure acco rds such unfavourable treatment 
to imported products bearing an EC-defined GI in  comparison to like domestic products bearing an 
EC-defined GI that it is, in effect, not possible to  register an EC-defined GI for an imported product 
under Regulation No. 2081/92 unless that other WTO Memb er in which the EC-defined GI originates 
also operates a similar system of registration and protection of EC-defined GIs.    180. Accordingly, the EC measure as a whole is inc onsistent with the EC's obligations pursuant to 
Article III:4 of GATT 1994, as it does not accord to imported products bearing an EC-defined GI 
treatment no less favourable than that accorded to lik e domestic products bearing an EC-defined GI.   
 B. T
HE EC MEASURE DOES NOT ACCORD NATIONAL TREATMENT IN THE PROTECTION OF 
INTELLECTUAL PROPERTY , CONTRARY TO ARTICLES  1.1 AND 1.3, 2.1 (INCORPORATING BY 
REFERENCE ARTICLE  2 OF THE PARIS CONVENTION (1967))  AND 3.1OF THE TRIPS  
AGREEMENT  
(i) The relevant requirements of Articles 1.1 and 1.3, 2.1 and 3.1 of the TRIPS 
Agreement and Article 2 of the Paris Convention (1967) 
181. Under the relevant provisions  of TRIPS Articles 1.1 and 1.376, 2.177 and 3.178 and Paris 
Article 279:   
                                                      
75 See paragraph 160 above.   
76 Article 1 of the TRIPS Agreement  provides in relevant part:   
 
1. Members shall give effect to the pr ovisions of this Agreement.  …   
 2. …   
 
3. Members shall accord the treatm ent provided for in this Agreement to the nationals of other 
Members.
[…]  In respect of the relevant intellectual property rights, the nationals of other Members 
shall be understood as those natural or legal persons that would meet the criteria for eligibility for protection provided for in the Paris Convention (1967) …   
77 Article 2.1 of the TRIPS Agreement  provides in relevant part:   
 In respect of Parts II, III and IV of this Agreemen t, Members shall comply w ith Articles 1 through 12, 
and Article 19, of the Paris Convention (1967).   
78 Article 3.1 of the TRIPS Agreement  provides in relevant part:    WT/DS290/R/Add.1 
 Page A-61 
 
 
 • nationals of any WTO Member enjoy in all other WTO Members the advantages 
granted now or in the future by those ot her WTO Members to their own nationals.  
They have the same protection, and the sa me legal remedy against any infringement 
of their rights, provided that the conditi ons and formalities imposed upon nationals 
are complied with (Paris Article 2(1) read together with TRIPS Article 2.180);   
 
• no requirement as to domicile or establishm ent in the country where protection is 
claimed may be imposed upon nationals of other WTO Members (Paris Article 2(2) 
read together with TRIPS Article 2.181);   
 
• each WTO Member is to accord to the nationals of other WTO Members treatment no 
less favourable than that it accords to its ow n nationals with regard to the protection 
of intellectual property, subject only to th e exceptions already pr ovided in the Paris 
Convention (1967).  "Protection" includ es matters affecting the availability, 
acquisition, scope, maintenance and enforcem ent of intellectual property rights as 
well as those matters affecting the use of intellectual property rights specifically addressed in the TRIPS Agreement  (TRIPS Article 3.1);    
 
• each WTO Member is to accord the treatment provided for in the TRIPS Agreement  
to the nationals of other WTO Members (TRIPS Article 1.3);  and  
 
• each WTO Member is to give effect to the provisions of the TRIPS Agreement  
(TRIPS Article 1.1).   
 
182. In US – Section 211 Appropriations Act , the Appellate Body said:  "… the national treatment 
obligation [has]  long been a cornerstone of the Paris C onvention" as well as "of the world trading 
system that is served by the WTO".
82  The Appellate Body has not otherwise considered the meaning 
of Paris Article 2.  However, one expert commentator has said:    
The advantages  which the nationals of the countries of the Union may claim in any 
other member country consist in the appli cation, without any discrimination, of the 
                                                                                                                                                                    
 
 
Each Member shall accord to the nationals of other Members treatment no less favourable than that it 
accords to its own nationals w ith regard to the protection [Footnote 3] of intellectual property, subject to the 
exceptions already provided in … the Paris Convention (1967) …   
---------------------- 
Footnote 3:  For the purposes of Articles 3 and 4,  'protection' shall include matters affecting the 
availability, acquisition, scope, maintenance and enforcement of intellectual property rights as well as 
those matters affecting the use of intellectual property  rights specifically addressed in this Agreement.   
79 Article 2 of the Paris Convention (1967)  provides in relevant part:   
 
1. Nationals of any country of th e Union shall, as regards the pr otection of industrial property, 
enjoy in all the other countries of the Union the advantages that their respective laws now grant, or may hereafter grant, to nationals;  all without prejudice to the rights specially provided for by this 
Convention.  Consequently, they shall have the same protection as the latter, and the same legal remedy 
against any infringement of their rights, provided that the conditions and formalities imposed upon 
nationals are complied with.   
 2. However, no requirement as to domicile or establishment in the country where protection is 
claimed may be imposed upon nationals of countries of the Union for the enjoyment of any industrial 
property rights.   
80 See also US – Section 211 Appropriations Act , paragraph 238.   
81 Ibid.   
82 US – Section 211 Appropriations Act , paragraph 241.   WT/DS290/R/Add.1 
Page A-62 
 
 
 national law as applied to nationals of the country itself.  …  [T]his means that no 
reciprocity of protection can be required by the States party to the Convention.  …83 
(emphasis in original) .   
and  
For nationals of the countries of the Union,  the question where they are domiciled or 
established is irrelevant.  The fact th at no establishment in the country where 
protection is claimed may be required does not  however diminish the possibility of an 
obligation to exploit certain industri al property rights in such country.84   
183. In US – Section 211 Appropriations Act , the Appellate Body went on to say:  "[t]he Panel was 
correct in concluding that, as the language of Article 3.1 of the TRIPS Agreement , in particular, is 
similar to that of Article III:4 of the GATT 1994,  the jurisprudence on Article III:4 of the GATT 1994 
may be useful in interpreting the national treatment obligation in the TRIPS Agreement ".85  In Korea – 
Beef, the Appellate Body said:  "[w]hether or not im ported products are treated 'less favourably' than 
like domestic products should be assessed … by examining whether a measure modified the conditions of competition  in the relevant market to th e detriment of imported products"
86 (emphasis in 
original) .  Further, in US – FSC (Article 21.5) , the Appellate Body said:  "[t]he 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 … must be founded on a careful analysis of the 
contested measure and of its implications in th e marketplace.  At the same time, however, the 
examination need not be based on the actual effects  of the contested measure in the marketplace"87 
(emphasis in original) .   
 
(ii) A right of objection was available to persons resident or established in an EC 
Member State that was not available to other WTO Member nationals in respect of 
the registration of more than 120 EC-de fined GIs under the normal registration 
process, contrary to Articles 1.1 and 1.3, 2.1 (incorporating Article 2 of the Paris 
Convention (1967)) and 3.1 of the TRIPS Agreement 
184. For the normal registration process for an EC-defined GI, Article 7.3 of Regulation 
No. 2081/92 provides in relevant part:  "[a]ny le gitimately concerned natu ral or legal person may 
object to the proposed registration by sending a duly substantiated statem ent to the competent 
authority of the Member State in which he resides or is established " (emphasis added) .   
 185. Until Article 12d.1 of Regulation No. 2081/92#3 ch anged the situation, there was no right of 
objection to the proposed registration of an EC-d efined GI for other WTO Member nationals who 
were not resident or established in an EC Member State.  Indeed, the EC itself conceded this.  The 
tenth recital to Regulation No. 692/2003 states in re levant part:  "[t]he ri ght of objection should be 
granted  to WTO member countries' nationals with a le gitimate interest on the same terms as laid down 
in Article 7.4 …" (emphasis added) .   
 186. However, in granting a right of objection to  other WTO Member nationals under Regulation 
No. 2081/92#3, the EC did so only in respect of new, and some then current, applications for 
registration of an EC-defined GI.  For applications for registration of an EC-defined GI for which the 
six-month notification period required by Arti cle 7.1 of the Regulation expired before 
                                                     
 
83 Bodenhausen , page 29.   
84 Bodenhausen , pages 31-32.   
85 US – Section 211 Appropriations Act , paragraph 242.   
86 Korea – Beef , paragraph 137.   
87 US – FSC (Article 21.5),  paragraph 215.    WT/DS290/R/Add.1 
 Page A-63 
 
 
 24 April 200388, nationals of other WTO Members not resident or established in an EC Member State 
still had no right of objection.    187. Yet, as at 24 April 2003, more than 120 EC-defined GIs
89 had been registered under the 
normal registration procedure in respect of which persons residing or established in an EC Member 
State had had a right of objection that was not ava ilable to other WTO Member nationals.  Regulation 
No. 2081/92#3 did not provide any right of objection in respect of, or in any way affect the registration of, those more than 120 EC-defined GIs.    
188. Further, in respect of then current appli cations for registration of an EC-defined GI, 
Regulation No. 2081/92#3 did not provide any adjustment of the six-month period for lodgement of objections under Article 7.1 of the Regulation.  Nationals of other WTO Members who were not 
resident or established in an EC Member State had less than six months in which to lodge an objection 
against the proposed registration of an EC-defined GI from an EC Member State, while the full six-
month period remained unaffected fo r EC Member State nationals.   
 
189. Accordingly, the EC measure is inc onsistent with the EC's obligations:   
 
• pursuant to Paris Article 2(1) as incorporated by TRIPS Article 2.1.  In respect of the 
registration under the normal registration process of more than 120 EC-defined GIs notified in Regulation No. 2400/96 as amended for which the period for lodging 
objections expired before 24 April 2003, the EC measure did not allow other WTO 
Member nationals not resident or established in an EC Member State to enjoy, as regards the protection of industrial property , the advantages that EC law granted to 
EC nationals.  In particular , nationals of other WTO Members did not have the same 
legal remedy against infringement of their rights as EC nationals, even if the 
conditions and forma lities imposed upon EC nationals were complied with, as the 
measure did not provide a means by which other WTO Member nationals could seek to protect any industrial property rights they may have held;   
 
• pursuant to Paris Article 2(2), as incorporated  by TRIPS Article 2.1.  In respect of the 
registration under the normal registration process of more than 120 EC-defined GIs notified in Regulation No. 2400/96 as amended for which the period for lodging 
objections expired before 24 April 2003 , the EC measure imposed on other WTO 
Members nationals a requirement as to dom icile or establishment in the EC for the 
enjoyment of an industrial property right;   
 
• pursuant to TRIPS Article 3.1.  In respect of the registration under the normal 
registration process of more than 120 EC -defined GIs notified in Regulation No. 
2400/96 as amended for which the period fo r lodging objections expired before 
24 April 2003, the EC measure accorded to other WTO Member nationals not resident or established in an EC Member State treatment less favourable than that accorded to EC nationals with regard to the protection of intellectual property.  Unlike EC nationals for whom such a means was made available, the EC measure did 
not provide a means by which other WTO Member nationals who were not resident 
or established in an EC Member State coul d seek to enforce their intellectual property 
rights;   
 
• pursuant to Paris Article 2(1), as incorporated by TRIPS Article 2.1, and pursuant to 
TRIPS Article 3.1.  In respect of any re gistrations of EC-defined GIs notified in 
                                                     
 
88 The date Regulation No. 2081/92#3 came into effect.   
89 These are the registrations published in Regulation No. 2400/96 as amended, Exhibit COMP-4.   WT/DS290/R/Add.1 
Page A-64 
 
 
 Regulation No. 2400/96 as amended where th e six-month period for lodgement of 
objections under Article 7.1 of Regulati on No. 2081/92 expired between 24 April and 
22 October 2003 inclusive,90 Regulation No. 2081/92#3 did not make any transitional 
provision in regard to the lodgement of objections by other WTO Member nationals 
not resident or established in an EC Member State in respect of such objection 
periods.  Accordingly, the EC measure did not:   
 
o allow nationals of any WTO Member to enjoy, as regards the protection of 
industrial property, the advantages that EC law granted to EC nationals as 
required by Paris Article 2(1);  and  
 
o accord to other WTO Member nationals treatment no less favourable than 
that accorded to EC nationals as required by TRIPS Article 3.1;   
 
• pursuant to TRIPS Article 2.1 to comply w ith Paris Articles 1 through 12, and 19;  
and  
 
• pursuant to TRIPS Article 1.3 to accord the treatment provided for in the TRIPS 
Agreement  to the nationals of other WTO Members.   
 
As a consequence, the EC has not complied with its obligation pursuant to TRIPS Article 1.1 to 
give effect to the provisions of the TRIPS Agreement .   
(iii) A right of objection was available to persons resident or established in an EC 
Member State that was not available to other WTO Member nationals in respect of 
the registration of more than 480 EC-de fined GIs under the simplified registration 
process, contrary to Articles 1.1 and 1.3, 2.1 (incorporating Article 2 of the Paris Convention (1967)) and 3.1 of the TRIPS Agreement 
190. Article 17.1 of Regulation No. 2081/92#1 and #2 provided a simplified registration process 
for "names" which were already legally protected or established by usage in Member States.  Further, 
Article 17.2 of the Regulation provided that:  "Article 7 shall not apply".
91   
 191. Notwithstanding the provisions of Article 17.2,  the European Court of Justice has found:   
 
"When adopting the basic regulation, the Council and the Commission stated in the 
minutes of the Council meeting … that 'where there are agricultural products or foodstuffs already being legally marketed before the making of the regulation which 
may be the subject of an application for registration, it has been provided for any 
Member States to object to the registration under the provisions of Article 7 of the 
regulation '.  …"92 (emphasis added) .   
 
192. However, that right of objection was not provided to other WTO Member nationals not 
resident or established in an EC Member State.    
                                                     
 
90 See, for example, Official Journal notice 2002/C 291/02 of 26 November 2002, Exhibit AUS-02, 
concerning the proposed registration of the name "Torta del Casar".   
91 Article 7 of Regulation No. 2081/92 provides a right of objection to the proposed registration of an 
EC-defined GI to natural or legal persons who resi de in or are established in an EC Member State.    
92 The Feta judgement, Exhibit COMP-11, paragraph 21.    WT/DS290/R/Add.1 
 Page A-65 
 
 
 193. Thus, as at 24 April 2003 when Regulation No . 2081/92#3 came into effect and Article 17 
was repealed, more than 480 EC-defined GIs93 had been registered under the simplified registration 
process in respect of which persons who were reside nt or established in an EC Member State had a 
right of objection that was not available to othe r WTO Member nationals.  Regulation No. 2081/92#3 
did not provide any right of objection to other WTO Me mber nationals in respec t of the registration of 
those more than 480 EC-defined GIs.  Nor did Regulation No. 2081/92#3 in any other way affect the continuing registration of those more than 480 EC -defined GIs and they remain in effect.   
 194. Accordingly, the EC measure is inc onsistent with the EC's obligations:   
 
• pursuant to Paris Article 2(1) as incorporated by TRIPS Article 2.1.  In respect of the 
registration under the simplified registration process of more than 480 EC-defined GIs notified in Regulation No. 1107/96 as amended, the EC measure did not allow 
other WTO Member nationals not resident or  established in an EC Member State to 
enjoy, as regards the protection of industri al property, the advantages that EC law 
granted to EC nationals.  In particular, su ch WTO Member nationals did not have the 
same legal remedy against infringement of their rights as EC nationals, even if the 
conditions and formalitie s imposed upon EC nationals were complied with, as the EC 
measure did not provide a means by which other WTO Member nationals could seek to protect any industrial property rights they may have held;   
 
• pursuant to Paris Article 2(2) as incorporated by TRIPS Article 2.1.  In respect of the 
registration under the simplified registration process of more than 480 EC-defined GIs notified in Regulation No. 1107/96 as amended, the EC measure imposed on 
nationals of other WTO Members a requireme nt as to domicile or establishment in 
the EC for the enjoyment of an industrial property right;   
 
• pursuant to TRIPS Article 3.1.  In respect of the continuing registration under the 
simplified registration process of more than 480 EC-defined GIs notified in 
Regulation No. 1107/96 as amended, the EC measure accorded to other WTO Member nationals not resident or established in an EC Member State treatment less favourable than that it accorded to EC nati onals with regard to the protection of 
intellectual property.  Unlike EC nationals for whom such a means was made 
available, the EC measure did not provide a means by which other WTO Member 
nationals who were not resident or establishe d in an EC Member State could seek to 
enforce their intellectual property rights;   
 
• pursuant to TRIPS Article 2.1 to comply w ith Paris Articles 1 through 12, and 19;  
and  
 
• pursuant to TRIPS Article 1.3 to accord the treatment provided for in the TRIPS 
Agreement  to the nationals of other WTO Members.   
 As a consequence, the EC has not complied with its obligation pursuant to TRIPS Article 1.1 to give 
effect to the provisions of the TRIPS Agreement .   
                                                     
 
93 These are the registrations published in Regulation No. 1107/96 as amended, Exhibit COMP-3.  Note 
that the registrations of an additional 31 EC-defined GIs for natural mineral waters and spring waters remain in 
effect until 31 December 2013 pursuant to Article 2 of Regulation No. 692/2003.   WT/DS290/R/Add.1 
Page A-66 
 
 
 (iv) The EC measure as a whole does not accord  national treatment to non-EC nationals, 
contrary to Articles 1.1 and 1.3, 2.1 (incor porating Article 2 of the Paris Convention 
(1967)) and 3.1 of the TRIPS Agreement 
195. In US – FSC (Article 21.5),  the Appellate Body found that "[t]he examination of whether a 
measure involves 'less favourable treatment' of import ed 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'" and that "[t]his examination … must be founded on a careful analysis of the contested measure and of its implications in the marketplace".
94   
 
196. Regulation No. 2081/92 provides an integrated regulatory framework for the registration and 
protection of EC-defined GIs that systemati cally accords to non-EC nationals less favourable 
treatment than that accorded to EC nationals in re gard to the registration of an EC-defined GI from 
another WTO Member.    197. EC producers perceive clear competitive a dvantages attached to registration, and thus 
protection, of an EC-defined GI under Regulati on No. 2081/92, evidenced by the more than 600 EC-
defined GIs already registered, the ong oing processing of further applications
95 and by EC Member 
State support for the EC measure.  Perceived advant ages include protection against a registered name 
becoming generic, broad ranging protection including even against evocation of a registered EC-
defined GI, as well as ex officio  Community wide protection96.   
 
198. However, non-EC nationals seeking to register, and thus protect, an EC-defined GI in respect 
of a geographical location in the territory of another WTO Member pursuant to Regulation No. 
2081/92 are not able to apply directly to the EC (whether to the Commission or another Community 
level body) to register an EC-defined GI.  That is the case even if non-EC nationals can demonstrate 
full compliance with the requirements of Article 4 of the Regulation (the product specification), for 
example, through evidence of registration in anot her WTO Member as a certification trademark.   
 199. Unless the WTO Member government in whose territory the geographical location at issue is situated is able and willing to m eet the equivalence and reciprocity conditions set out by Article 12.1 
of Regulation No. 2081/92, non-EC  nationals are not able to access the rights available to EC 
nationals.   
 200. Regulation No. 2081/92 also  systematically accords to non-EC nationals less favourable 
treatment than that accorded to EC nationals relating to the enforcement of trademark rights.  Further, 
the less favourable treatment applies in respect of both current and future registrations of EC-defined 
GIs.   
 201. The registrations of approximately 600 EC-defined GIs made before Regulation No. 
2081/92#3 came into effect on 24 April 2003 and provided a right of objection to the proposed registration of an EC-defined GI to other WTO Me mber nationals not resident or established in the 
EC remain in effect.  Yet to this day, the EC has not provided a means for nationals of other WTO 
Members not resident or established in an EC Memb er State to seek to exercise, or enforce, an 
intellectual property right potentially affected by th ose registrations.  The pervasive less favourable 
treatment accorded to non-EC nationals not resident  or established in an EC Member State is not 
excused by the fact that a few non-EC nationals resi dent or established in an  EC Member State might 
have been able to seek to exercise,  or enforce, any intellectual propert y rights they may have held in 
                                                     
 
94 See paragraph 160 above.   
95 See, for example, Offici al Journal notice 2004/C 93/11 of 17 April 2004 concerning an application 
for registration of the name "Za fferano di San Gimignano".   
96 See, for example, WTO document IP/Q2/EEC/1 of 1 October 1997, Section II "Replies to Questions 
from New Zealand", part B of the EC's response to question 4.    WT/DS290/R/Add.1 
 Page A-67 
 
 
 relation to those proposed registrations.  The nationa l treatment obligation extends to all nationals of 
other WTO Members, not just those resident or established in an EC Member State.    202. That less favourable treatment to non-EC nationals is ongoing.   
 
203. A non-EC national not resident or established in  an EC Member State must lodge an objection 
to the proposed registration of an EC-defined GI  through the government of the WTO Member in 
which it resides or is established.  That requirement  applies regardless of whether the EC-defined GI 
concerns a geographic location within an EC Member State or another WTO Member.  Even if a non-
EC national trademark right holder is able to have  its objection considered by the Committee of EC 
Member States,
97 it faces the additional hurdle of not having a national representative on the 
Committee to speak for its interests.    204. Australia further understa nds Article 12d.1 of Regulation No. 2081/92#3 to impose the 
condition of recognition under Artic le 12.3 of the Regulation with regard to the equivalence and 
reciprocity requirements set out in Article 12.1 of the Regulation for the exercise of a right of 
objection by another WTO Member national.  For the same reasons as set out in relation to Australia's 
claim under GATT Article III:4 above,
98 such requirements are distin ct additional requirements to 
which EC nationals are not subject.    
205. Moreover, notwithstanding any outward a ppearance of symmetry of treatment, the EC 
measure accords non-EC nationals less favourable tr eatment than that accorded to EC nationals in 
respect of the registration of an EC-defined GI from another WTO Member and in respect of the enforcement of trademark rights concerning the propo sed registration of an EC-defined GI.  The fact 
that the EC and its Member States have legally define d rights and obligations in relation to each other 
and to EC Member State nationals makes the regi stration and objection processes for EC nationals 
fundamentally different to those for non-EC nati onals.  Few other WTO Member governments have 
such legally defined relationships  affecting the maintenance and enforcement of an intellectual 
property right, a right expressly recognised as a private right by the TRIPS Agreement .   
 206. Close scrutiny of the fundamental thrust a nd effect of the EC measure based on a careful 
analysis of the measure and of its implications in  the marketplace, as suggested by the Appellate 
Body,
99 demonstrates that the EC measure as a whole fails  to provide to non-EC  nationals the equality 
of opportunity with regard to the protection of  intellectual property that underpins the national 
treatment principle of the TRIPS Agreement  and the Paris Convention (1967).  Accordingly, Australia 
submits that the EC measure as a whole is in consistent with the EC's obligations:   
 
• pursuant to Paris Article 2(1) as incorporated by TRIPS Article 2.1, as it does not 
allow nationals of any other WTO Member to enjoy, as regards the protection of industrial property, the advantages or benefits  that EC law grants to EC nationals;   
 
• pursuant to Paris Article 2(2) as incorporated by TRIPS Article 2.1, as it sets out a 
requirement as to domicile or establishment for the enjoyment of an industrial 
property right;   
 
• pursuant to TRIPS Article 3.1, as it does not accord to nationals of other WTO 
Members treatment no less favourable than that  it accords to EC nationals with regard 
to the protection of intellectual property;   
 
                                                     
 
97 See paragraph 99 above.   
98 See paragraph 168 above.   
99 See paragraph 160 above.   WT/DS290/R/Add.1 
Page A-68 
 
 
 • pursuant to TRIPS Article 2.1 to comply w ith Paris Articles 1 through 12, and 19;  
and  
 
• pursuant to TRIPS Article 1.3 to accord the treatment provided for in the TRIPS 
Agreement  to the nationals of other WTO Members.   
 
As a consequence, the EC has not given effect to the provisions of the TRIPS Agreement , contrary to 
TRIPS Article 1.1.   
IX. ARTICLE 65.1 OF THE TRIPS AGREEMENT DOES NOT EXCUSE 
INCONSISTENCIES WITH THE EC'S OBLIGATIONS UNDER THAT AGREEMENT 
207. Under Article 65.1
100 of the TRIPS Agreement , WTO Members were not required to apply the 
provisions of the TRIPS Agreement  until 1 January 1996, that is, af ter a general period of one year 
following the date of entry into force of the WTO Agreement  (which occurred on 1 January 1995).  
The EC does not qualify for an additional transitiona l period as it is not a developing country (TRIPS 
Articles 65.2 and 65.4) or an economy in transition (TRIPS Article 65.3).  Nor is it a least developed 
country to which TRIPS Article 66.1 might apply.  The EC was thus required to apply the provisions 
of the TRIPS Agreement  not later than 1 January 1996.   
 208. The actions by the EC alleged in this s ubmission constitute contraventions of the EC's 
obligations under the TRIPS Agreement  after 1 January 1996.  Accordingly, the transitional period 
provided for in TRIPS Article 65.1 does not operate to excuse the inconsistencies of the EC measure 
with the EC's obligations under TRIPS Articles 1.3,  2.1 (incorporating Paris Articles 2(1) and 2(2), 
10bis(1) and 10 ter(1)), 3.1, 16.1, 20, 22.2, 24.5, 41.1, 41.2, 41.3 and 42.   
 
X. THE EC MEASURE IS INCONSISTENT WITH ARTICLE 2.1 AND 2.2 OF THE TBT 
AGREEMENT 
A. T
HE EC MEASURE IS IN PART A TECHNICAL REGULATION WITHIN THE MEANING OF ANNEX 1 
TO THE TBT  AGREEMENT  
(i) Definition of a "technical regulation" 
209. TBT Annex 1.1 defines a "technical regulation" for the purposes of the TBT Agreement  as a:   
 
[d]ocument which lays down product characteristics or their related processes and 
production methods, including the applicable  administrative provisions, with which 
compliance is mandatory.  It may also include  or deal exclusively with terminology, 
symbols, packaging, marking or labelling requirements as they apply to a product, process or production method.   
210. In EC – Sardines , the Appellate Body recapped the three criteria that a document must meet 
to fall within the definition of a "technical regulation":   
 
…  First , the document must apply to an identif iable product or group of products.  
The identifiable  product or group of  products need not, however, be expressly 
                                                     
 
100 Article 65.1 of the TRIPS Agreement  reads as follows:   
 Subject to the provisions of paragraphs 2, 3 and 4, no Member shall be obliged to apply the provisions 
of this Agreement before the expiry of a general period of one year following the date of entry into 
force of the WTO Agreement.    WT/DS290/R/Add.1 
 Page A-69 
 
 
 identified  in the document.  Second , the document must lay down one or more 
characteristics of the product.  These product characteristics may be intrinsic, or they 
may be related to the product.  They may be  prescribed or imposed in either a positive 
or a negative form.  Third , compliance with the produc t characteristics must be 
mandatory.  …101  (emphases in original)    
(ii) The EC measure applies to an ident ifiable product or group of products 
211. In EC – Asbestos , the Appellate Body found:  "[a]lthough the TBT Agreement  clearly applies 
to 'products' generally, nothing in the text of that  Agreement suggested that those products need be 
named or otherwise expressly  identified in a 'technical regulation'"102 (emphasis in original) .  In EC – 
Sardines , the Appellate Body elaborated:  "the requireme nt that a 'technical regulation' be applicable 
to identifiable  products relates to aspects of complian ce and enforcement, because it would be 
impossible to comply with or enforce a 'technical regulation' without knowing to what the regulation applied"
103 (emphasis in original) .   
 212. The formal title of Regulation No. 2081/92 is "Council Regulation (EEC) No. 2081/92 on the 
protection of [EC-defined GIs]  for agricultural products and foodstuffs ".  The preamble to Regulation 
No. 2081/92#1 states in relevant part that "the sc ope of this Regulation is limited to certain 
agricultural products and foodstuffs for which a li nk between product or foodstuff characteristics and 
geographical origin exist", while noting that the sc ope could be enlarged to encompass other products 
or foodstuffs.  Further, Article 1.1 of the Regulation provides that the Regulation "lays down rules on 
the protection of [EC-defined GIs]  of [agricultural products and foodstuffs] ".   
 213. The EC measure applies to an identifiabl e group of products:  it applies to agricultural 
products and foodstuffs in respect of which an EC-def ined GI is registered and being protected, or in 
respect of which registration and protection of an EC-defined GI is being sought, pursuant to 
Regulation No. 2081/92.   
 
(iii) The EC measure lays down product charact eristics or their related process and 
production methods, including the appli cable administrative provisions 
214. In EC – Asbestos , the Appellate Body found that:   
 
… the "characteristics" of a product incl ude … any objectively definable "features", 
"qualities", "attributes", or other "distinguishing mark" of a product.  Such "characteristics" might relate … to a product's composition, size, shape, colour, texture, hardness, tensile strength, flammab ility, conductivity, density or viscosity.  In 
the definition of a "technical regulation" in Annex 1.1, the TBT Agreement  itself gives 
certain examples of "product characteristi cs" – "terminology, symbols, packaging, 
marking or labelling requirements".  …
104   
215. The Appellate Body held that these examples i ndicate that "product characteristics" include 
not only features and qualities intrinsic to the product itself but also related "characteristics", such as 
the means of identification, the presentation and the appearance of a product.  Finally, it noted that the 
language used in the TBT Annex 1.1 definition indica tes that a "technical regulation" may be limited 
to only one or a few product characteristics.105   
 
                                                      
101 EC – Sardines , paragraph 176.   
102 EC – Asbestos , paragraph 70.   
103 EC – Sardines , paragraph 185.   
104 EC – Asbestos , paragraph 67.   
105 EC – Asbestos , paragraph 67.   WT/DS290/R/Add.1 
Page A-70 
 
 
 216. In addition to laying down product characteris tics, the definition of a technical regulation in 
TBT Annex 1.1 includes a document which lays down "related processes and production methods, 
including the applicable administrative provisions" .  Therefore, a document which does not stipulate 
mandatory "product characteristics" per se  but lays down mandatory related processes and/or 
production methods or their applicable administrativ e provisions may be a "technical regulation" for 
the purposes of the TBT Agreement .   
 217. The meaning of "related processes and production methods, including the applicable 
administrative provisions" has not been consider ed by a WTO Panel or the Appellate Body.  
However, having regard to the ordinary meaning of  the words in their context and in light of the 
object and purpose of the TBT Agreement , Australia submits that:   
 
• a "process" may generally be considered as a regular sequence of actions directed at a 
specified purpose;
106   
 
• a "production method" may generally be cons idered as the way in which something is 
produced;107  and  
 
• "related" processes and production methods ma y generally be considered as processes 
and production methods which are connected to the product characteristics.   
 218. Accordingly, a technical regulation within the meaning of the TBT Agreement  includes a 
document which may generally be considered to set out a regular sequence of actions directed at a 
specified purpose or the way in which something is produced and which is connected to one or more 
product characteristics.    219. The EC measure lays down product characteris tics or their related processes within the 
meaning of the TBT Annex 1.1 definition in two ways.   
 
220. Firstly, Article 12.2
108 of Regulation No. 2081/92 sets out a specific labelling requirement.  It 
provides that use of EC-defined GIs from other WT O Members will only be authorised "if the country 
of origin of the product is clearly and visibly indicat ed on the label".  To that extent, the EC measure 
is a document which "include[s] … labelling require ments as they apply to a product" within the 
meaning of a technical regulation as defined in TBT Annex 1.1.   
                                                      
106 OED , Vol.2, page 2364, defines "process" in relevant part as:  "[a] thing that goes on or is carried 
on;  a continuous series of actions, events, or changes;  a course of action, a procedure;  esp. a continuous and 
regular action or succession of actions occurring or perfo rmed in a definite manner;  a systematic series of 
actions or operations directed to some end, as in manufacturing, printing, photography, etc".   
107 OED  defines:   
 "production" in relevant part as:  "1.  Something which is produced by an action, process, etc, a 
product.  …  2.  The action or an act of producing,  making or causing something;  the fact or condition 
of being produced.  The process of being manufactured  commercially, esp. in large quantities;  the rate 
of this" (Vol.2, page 2367);  and  
 
"method" in relevant part as:  "Procedure for attaining an object.  …  2.  A mode of procedure;  a 
(defined or systematic) way of doing a thing, …" (Vol.1, page 1759).   
108 Article 12.2 of Regulation No. 2081/92 provides as follows:   
 
If a protected name of a third country is identical to a Community protected name, registration shall be 
granted with due regard for local and traditional usage and the practical risks of confusion.   
 
Use of such names shall be authorized only if the country of origin of the product is clearly and visibly 
indicated on the label.    WT/DS290/R/Add.1 
 Page A-71 
 
 
  
221. Secondly, Articles 4, in particular Arti cle 4.2(g), and 10 of Regulation No. 2081/92 read 
together require that EC Member States have in pl ace inspection structures to ensure that agricultural 
products and foodstuffs bearing a protected name meet the requirements laid down in the product 
specification.  Checking compliance with the criteria set out in product specifications is a regular 
sequence of actions directed at a specified purpose,  that is, to determine whether a product complies 
with its product specification.109  Further, by definition, the product specification requirements set out 
in Article 4.2 of the Regulation include product charact eristics, in particular in sub-paragraphs (b) and 
(e).  To the extent that Articles 4 and 10 of the Regulation read together set out a process related to 
product characteristics for agricultural products an d foodstuffs, the EC measure is a technical 
regulation as defined in TBT Annex 1.1.  Furthe r, Article 12.1 of the Regulation extends the 
application of Articles 4 and 10 of the Regulati on to agricultural products and foodstuffs from other 
WTO Members as one of the conditions  for the application of the Regulation to agricultural products 
and foodstuffs from other WTO Members.110   
 
(iv) The EC measure mandates compliance with pr oduct characteristics or their related 
process and production methods, including the applicable administrative provisions  
222. In EC – Asbestos , the Appellate Body noted that the definition of a technical regulation in 
TBT Annex 1.1 states that compliance with the produc t characteristics laid down in the document is 
mandatory:  "[w]ith respect to products, a 'technical regulation' has the effect of prescribing  or 
imposing  one or more 'characteristics' – 'features', ' qualities', 'attributes' or other 'distinguishing mark' 
"  (emphases in original) .111  The Appellate Body also found in EC – Asbestos  that a measure should 
be examined as an "integrated whole", rather than be ing separated out into constituent elements, e.g. a 
prohibition and an exception.112   
 
223. In Article 12.2 of Regulation No. 2081/92, th e term "shall" shows that this condition meets 
the requirement in TBT Annex 1.1 of mandatory compliance:  use of an EC-defined GI on an agricultural product or foodstuff from another WTO Member can be authorised only if the labelling 
requirement set out in Article 12.2 of the Regulation is met.    224. Similarly, the requirement to have in place inspection structures pursuant to Articles 4, 10 and 
12.1 of the Regulation is mandatory.  Unless thes e requirements are met, agricultural products or 
foodstuffs from another WTO Member are not able to  be registered – and therefore protected – under 
the Regulation.   
                                                     
 
109 See paragraph 28 above.   
110 In EC – Asbestos  (paragraph 64), the Appellate Body said, in determining whether a measure is a 
technical regulation, "… the proper legal character of the measure at issue cannot be determined unless the 
measure is examined as a whole".  Thus, specific provisions of Regulation No. 2081/92 that extend other 
provisions to apply to products from other WTO Members bearing protected names need to be examined as an 
integrated whole with those provisions.   
111 EC – Asbestos , paragraph 68.  The Appellate Body reaffirmed this finding in EC – Sardines , at 
paragraph 176.   
112 EC – Asbestos , paragraph 64.  The Appellate Body reaffirmed this finding in EC – Sardines , at 
paragraphs 192-193.   WT/DS290/R/Add.1 
Page A-72 
 
 
 B. THE EC MEASURE ACCORDS TO PRODUCTS IM PORTED FROM THE TERRITORY OF ANY WTO  
MEMBER TREATMENT LESS FAVOURABLE THAN THAT  ACCORDED TO LIKE PRODUCTS OF 
NATIONAL ORIGIN , CONTRARY TO ARTICLE 2.1 OF THE TBT  AGREEMENT  
(i) The relevant requirements of the TBT Agreement 
225. TBT Article 2.1113 requires in relevant part that, in  their technical regulations, central 
government bodies of WTO Members provide to impor ted products treatment no less favourable than 
that accorded to like domestic products.    226. The concepts of "like product" and "treat ment no less favourable" have been examined in 
many disputes under the GATT and the WTO in the context of obligations under the GATT 1947 and 
the GATT 1994.  In US – Section 211 Appropriations Act , the Appellate Body said:  "[t]he Panel was 
correct in concluding that, as the language of Article 3.1 of the TRIPS Agreement , in particular, is 
similar to that of Article III:4 of the GATT 1994,  the jurisprudence on Article III:4 of the GATT 1994 
may be useful in interpreting the national treatment obligation in the TRIPS Agreement ".
114  The 
current situation is analogous to that examined by the Appellate Body in US – Section 211 
Appropriations Act .  Moreover, the TBT Agreement  was negotiated to further the objectives of GATT 
1994.115  In addition, the TBT national treatment obligation in Article 2.1 follows closely GATT 
Articles III, reproducing the requirement of "treatme nt no less favourable than that accorded to like 
products".  In Australia's view therefore, the previous consider ation of GATT Article III:4 can 
properly be looked to for clarification of the nati onal treatment obligation in TBT Article 2.1.   
 
227. In EC – Asbestos  the Appellate Body made the following statement about the term "like 
products" with regard to a GATT Article III:4 claim:    
As products that are in a competitive relations hip in the marketplace could be affected 
through treatment of imports  "less favourable" than the treatment accorded to 
domestic  products, it follows that the word "like" in Article III:4 is to be interpreted to 
apply to products that are in such a comp etitive relationship.  Thus, a determination 
of "likeness" under Article III:4 is, fundamen tally, a determination about the nature 
and extent of a competitive relati onship between and among products.  …
116 
(emphases in original)    
228. In EC – Asbestos , the Appellate Body also found that the conditions of the marketplace and 
the effect of measures on the competitive rela tionship between imported products and products of 
national origin is key to the "broad and fund amental purpose" of GATT Article III to avoid 
protectionist internal measures.117  The Appellate Body said:   
 
                                                      
113 Article 2.1 of the TBT Agreement  provides that, with respect to their central government bodies:   
 
Members shall ensure that in respect of technical regulations, products imported from the territory of 
any Member shall be accorded treatment no less fa vourable than that accord ed to like products of 
national origin …   
114 US – Section 211 Appropriations Act , paragraphs 242.   
115 See second preambular paragraph to the TBT Agreement .   
116 EC – Asbestos , paragraph 99.  The Appellate Body used the four criteria approach to determining 
likeness that has its origins in the Report of the Working Party on Border Tax Adjustments  and has been 
followed since by panels and the Appellate Body in disputes including Japan – Alcoholic Beverages  and US – 
Gasoline .  These, which it stressed provide a "framework" for a case-by-case analysis of "likeness", are:  (i) the 
properties, nature and quality of the pr oducts;  (ii) the end-uses of the prod ucts;  (iii) consumers' tastes and 
habits;  and (iv) the tariff classification of the products (paragraphs 100-102).  
117 EC – Asbestos , paragraphs 96-98.    WT/DS290/R/Add.1 
 Page A-73 
 
 
 The term "less favourable 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, "prot ection" of the group of "like" domestic 
products.  …
118   
229. In Korea – Beef , the Appellate Body found:  "[w]hether  or not imported products are treated 
'less favourably' than like domestic products shoul d be assessed … by examining whether a measure 
modified the conditions of competition  in the relevant market to the detriment of imported 
products".119  In US – FSC (Article 21.5) , the Appellate Body found:  "[ t]he examination of whether a 
measure involves 'less favourable treatment' of impo rted 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 … 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".120  (emphases in 
originals)    
 
(ii) The EC measure concerns both imported and domestically produced "like products" 
within the meaning of Article 2.1 of the TBT Agreement 
230. In the circumstances of the present dispute, it is  sufficient for the Panel to consider the issues 
in the context of a general presumption of likeness.121  As a type of TRIPS-defined GI, an EC-defined 
GI is an intellectual property right and does not affect the analysis of likeness of the underlying 
products.  Thus, for example:  im ported apples and pears would be lik e products to "Savoie" apples 
and pears;  imported oysters would be like products to "Whitstable" oysters;  imported olive oils would be like products to the many olive oils for which an EC-defined GI has been registered;  and 
imported trout would be like product with "Black Forest" trout.
122   
 
231. In addition, where the geographical area is a region which encompasses territory in both an 
EC Member State and another WTO Member, agricu ltural products or foodstuffs produced in that 
geographic area could be exactly the same irrespec tive of the traversing border.  Under Regulation 
No. 2081/92, it is the geographical area which by  definition gives rise to the characteristics 
attributable to the product protected by the EC-defin ed GI.  Logically, products produced within that 
geographical area – irrespective of the territory of  which WTO Member in which they are produced – 
must also by definition be able to be like products.    232. Finally, Australia notes the overall context in which the labelling requirement established by 
Article 12.2 of Regulation No. 2081/92 occurs, whic h includes to "ensure fair competition between 
the producers of products bearing such [EC-defined GIs] .
123  To that end, the Regulation offers 
protection to registered EC-defined GIs against misuse and unfair competition, including misleading 
indication, evocation, unauthorised commercial use exploiting the reputation of the protected name 
                                                      
118 EC – Asbestos , paragraph 100.   
119 Korea – Beef , paragraph 137.   
120 US – FSC (Article 21.5) , paragraph 215.   
121 Australia notes that, in the circumstances of this dispute, it is not necessary for the Panel to consider 
whether products which are like within the meaning of  GATT Article III:4 will always be like within the 
meaning of TBT Article 2.1.    
122 Australia notes that the question of the extent to  which cheeses are like products has not previously 
been the subject of a ruling by a GATT or WTO dispute settlement panel.  Australia considers that there would 
be few, if any, imported cheeses which are not like pro ducts to EC domestic cheeses within the meaning of TBT 
Article 2.1, but does not consider it necessary for the Panel to make a finding on this precise issue to resolve the 
claims made in this dispute.   
123 Regulation No. 2081/92, preambular paragraphs.   WT/DS290/R/Add.1 
Page A-74 
 
 
 "or any other practice likely to mislead the pub lic as to the true origin of the product".124  The notion 
of imitating a product in a way that would lead to unfair competition between that product and its 
legitimate counterpart would normally involve a high degree of similarity or "likeness".   
 
233. Thus, the EC measure concerns both impor ted and domestically produced like products 
within the meaning of TBT Article 2.1.    
(iii) The EC measure provides "less favourable" treatment to like imported and 
domestically produced products within th e meaning of Article 2.1 of the TBT 
Agreement 
234. Under Article 12.2 of Regulation No. 2081/92, use of a "protected name of a third country" 
"shall be authorized only if the country of origin of the product is clearly and visibly indicated on the 
label".  The precise meaning of this provision is unclear.    235. Firstly, it is unclear whether the expression "such names" in the second sub-paragraph of 
Article 12.2 refers to an EC-defined GI relating to  a geographical location in the territory of another 
WTO Member that is identical to a Community protected name or to all products from other WTO 
Members bearing an EC-defined GI.  Australia unders tands this provision to mean that use within the 
EC on an imported product of an EC-defined GI relating to a geographical location in another WTO 
Member that is protected by that WTO Member and
 which is identical to an EC-defined GI that is 
already being protected within the EC may be authorised "only if the country of origin of the 
[imported]  product is clearly and visibly indicated on the label".  Where, however, the EC-defined GI 
that is already being protected is for a like product from within the EC, the EC product is not required 
to show the country of origin.    
236. Secondly, the phrase "protected name of a thir d country" is ambiguous.  Given the context of 
Article 12 of Regulation No. 2081/ 92 as a whole, however, Australia assumes that the phrase means 
an EC-defined GI relating to a geographical location in the territory of another WTO Member that is 
protected by that WTO Member.
125   
 237. Irrespective of the precise meaning of a "pro tected name of a third country", however, 
Article 12.2 of Regulation No. 2081/92 imposes on an  agricultural product or foodstuff from another 
WTO Member different treatment to that applicable  to a domestically produced like product.  For a 
"protected name of a third country" that is iden tical to a "Community protected name" to be used
 in 
the EC market, the country of origin of the im ported good bearing the "protected name" must be 
clearly and visibly indicated on the label of that  imported good, notwithstanding that there is no 
requirement for the corresponding domestically produced like product to clearly and visibly indicate a 
country of origin on its label.    238. Australia notes that differential treatmen t alone is not necessarily conclusive of less 
favourable treatment.
126   
 
239. In the broad range of circumstances potentia lly encompassed by Article 12.2 of Regulation 
No. 2081/92, however, there are likely to be situa tions where this labelling requirement modifies the 
conditions of competition between im ported products and the like dom estically produced products to 
the detriment of the imported products.  For exampl e, producers of a fresh fruit product such as an 
apple from another WTO Member could be required to incur extra expense to produce and attach a 
                                                      
124 See paragraph 24 above.   
125 Australia notes two other possible meanings are:  a "name" that is protected in another WTO 
Member as another form of intellectual property righ t; and the actual name of a WTO Member, for example, 
"Australia".   
126 Korea – Beef , paragraph 135.    WT/DS290/R/Add.1 
 Page A-75 
 
 
 second label to that piece of fruit to comply with the Regulation.  Thus, a prescriptive requirement 
that applies without exception to imported produc ts but not to domestically produced like products 
will in some circumstances result in less favourable  treatment being accorded to an imported product, 
contrary to TBT Article 2.1.   
 
240. Even if Article 12.2 of the Regulation appli es to all imported products bearing an EC-defined 
GI rather than only to th ose bearing an EC-defined GI that is identical to an EC-defined GI already 
being protected within the EC, it w ill still be inconsistent with TBT Ar ticle 2.1 for the reasons set out 
in the preceding paragraphs.   
 
241. Accordingly, the EC measure accords less favourable treatment to imported products than to domestically produced like products, co ntrary to TBT Article 2.1.   
 C. T
HE EC MEASURE HAS BEEN PREPARED , ADOPTED AND /OR APPLIED WITH THE EFFECT OF 
CREATING UNNECESSARY OBSTACLES TO INTERNATIONAL TRADE , BEING MORE TRADE -
RESTRICTIVE THAN NECESSARY TO FULFIL A LEGITIMATE OBJECTIVE , TAKING ACCOUNT OF 
THE RISKS NON -FULFILMENT WOULD CREATE , CONTRARY TO ARTICLE 2.2 OF THE TBT  
AGREEMENT  
(i) The relevant requirements of the TBT Agreement 
242. TBT Article 2.2127 requires that, in respect of technical  regulations, central government bodies 
of WTO Members ensure that those technical regulations are not prepared, adopted or applied with a 
view to or with the effect of creating unnecessary obstacles to international trade.  To that end, 
technical regulations must not be more trade restri ctive than necessary to fulf il a legitimate objective, 
taking account of the risks non-fulfilment would create.    
243. Having regard to the text of TBT Article 2.2,  Australia submits that for a technical regulation 
to be consistent with the provision, it must:    
• pursue a "legitimate objective";   
 
• achieve – or be capable of achieving – that objective;  and  
 
• not be more trade restrictive than necessar y to achieve that objective, taking account 
of the risks non-fulfilment would create.   
 A failure to comply with one or more of th ese elements would render a technical regulation 
inconsistent with TBT Article 2.2.   
244. Read in the context of the object and purpose of the TBT Agreement , including as set out in 
the preamble to that Agreement,
 128 the concepts and the tests set out in TBT Article 2.2 share 
                                                      
127 Article 2.2 of the TBT Agreement  provides that, with respect to their central government bodies:   
 
Members shall ensure that technical regulations are not prepared, adopted or applied with a view to or 
with the effect of creating unnecessary obstacles to  international trade.  For this purpose, technical 
regulations shall not be more trade-restrictive than  necessary to fulfil a leg itimate objective, taking 
account of the risks non -fulfilment would create.  Such  legitimate objectives are, inter alia :  …  the 
prevention of deceptive practices …  In assessing such risks, relevant elements of consideration are, 
inter alia :  available scientific and technical information, related processing technology or intended 
end-uses of products.   
128 The second preambular paragraph of the TBT Agreement  states:   
 
Desiring to further the objectives of GATT 1994 WT/DS290/R/Add.1 
Page A-76 
 
 
 characteristics with those applicable to the genera l exceptions of GATT Article XX, and in particular 
GATT Article XX(d)129.  Such similarity is logical given that the TBT Agreement  was expressly 
intended to further GATT objectives.  WTO jurispr udence on GATT Article XX is therefore relevant 
and may thus provide a useful guide to the clarification of TBT Article 2.2.   
 
245. In EC – Asbestos130 and Korea – Beef131, the Appellate Body addressed the "necessity test" in 
the context of GATT Article XX(b) and (d) respectivel y and cited with approval the standard set forth 
by the Panel in United States – Section 337 :   
 
…  [A] contracting party cannot justify a measure inconsistent with another GATT 
provision as "necessary" in terms of Article XX(d) if an alternative measure which it could reasonably be expected to employ an d which is not inconsistent with other 
GATT provisions is available to it.
132   
246. In EC – Asbestos , the Appellate Body recapped and summarised its findings in Korea – Beef  
in relation to GATT Article XX(d) thus:   
 
…  [O]ne aspect of the "weighing and balancing process … comprehended in the determination of whether a WTO-consiste nt alternative measure" is reasonably 
available is the extent to which the altern ative measure "contributes to the realization 
of the end pursued".
[…]  In addition, we observed in that  case, that "[t]he more vital or 
important [the] common interests or values" pursued, the easier it would be to accept 
as "necessary" measures designed to achieve those ends.[…]  In this case, the objective 
pursued by the measure is the preservation of human life and health through the elimination, or reduction, of the well-known, and life-threatening, health risks posed by asbestos fibres.  The value pursued is  both vital and important in the highest 
degree.  The remaining question, then, is wh ether there is an alternative measure that 
would achieve the same end and that is l ess restrictive of trade than a prohibition.
133   
                                                                                                                                                                     
 
The sixth preambular paragraph of the TBT Agreement  states:   
 
Recognizing that no country should be prevented from  taking measures necessary to ensure the quality 
of its exports, or for the protection of human, animal or plant life or health, of the environment, or for the prevention of deceptive practices , at the levels it considers approp riate, subject to the requirement 
that they are not applied in a manner which would constitute a means of arbitrary or unjustifiable 
discrimination between countries where the same c onditions prevail or a disguised restriction on 
international trade, and are otherwise in accordan ce with the provisions of this Agreement.   
129 Article XX(d) of GATT 1994, headed "Gener al Exceptions", prov ides as follows:   
 Subject to the requirement that such measures are not applied in a manner which would constitute a 
means of arbitrary or unjustifiable discrimination be tween countries where the same conditions prevail, 
or a disguised restriction on international trade, noth ing in this Agreement shall be construed to prevent 
the adoption or enforcemen t by any contracting party of measures:  …  necessary to secure compliance 
with laws or regulations which are not inconsistent  with the provisions of this Agreement, including 
those relating to customs enforcement, … the protection of patents, trade marks and copyrights, and the 
prevention of deceptive practices;  …   
130 EC – Asbestos , paragraph 171.   
131 Korea – Beef , paragraphs 165-166.   
132 United States – Section 337 , paragraph 5.26.   
133 EC – Asbestos , paragraph 172.    WT/DS290/R/Add.1 
 Page A-77 
 
 
 (ii) The EC measure pursues a legitimate objecti ve within the meaning of Article 2.2 of 
the TBT Agreement 
247. Australia understands that the purpose being pursued by the EC measure is the 
implementation of matters concerning the availab ility, acquisition, scope, maintenance, use and/or 
enforcement of an intellectual propert y right expressly provided for by the TRIPS Agreement  within 
the territory of the EC, and the prevention of asso ciated deceptive practices.  Australia does not 
contest that such purposes could constitute "leg itimate objectives" within the meaning of TBT 
Article 2.2.    
(iii) The EC measure fulfils, or is capable of fu lfilling, its legitimate objective within the 
meaning of Article 2.2 of the TBT Agreement 
248. Australia does not contest that the EC measur e generally fulfils, or is capable of generally 
fulfilling, the legitimate objectives seemingly being pursued by the measure in respect of agricultural 
products and foodstuffs bearing an EC-defined GI.    
(iv) The EC measure is more trade restric tive than necessary to fulfil its legitimate 
objective, taking account of the risks non-fulfilment would create, contrary to Article 2.2 of the TBT Agreement 
249. As described previously,
134 Articles 4, 10 and 12.1 of Regulation No. 2081/92 read together 
require that another WTO Member have in place "i nspection arrangements equivalent to those laid 
down in" the Regulation.  Article 10.1 provides that "the function of [the inspection structures]  shall 
be to ensure that agricultural products and foodstuffs  bearing a protected name meet the requirements 
laid down in the [product specification] " and sets out the detailed requirements for the inspection 
structures.  The precise meaning of "inspection arra ngements" in Article 12.1 is not immediately clear 
given use of the expression "inspection structures" in Articles 4.2(g) and 10.  However, 
Article 12a.2(b) expressly requires from another WTO Member "a declaration that the structures 
provided for in Article 10  are established in its territory" (emphasis added) .   
 250. Accordingly, Australia understands that th e requirement of Article 12.1 of Regulation No. 
2081/92 for another WTO Member to have in place "ins pection arrangements" is in fact a requirement 
to have in place the inspection structures required by  Article 10 of the Regulation.  Further, that 
requirement is absolute:  it provid es no leeway for regard to be had to the particular circumstances or 
the existing arrangements of another WTO Member.    251. Consistent with the requireme nt established by Regulation No. 2081/92, a producer in another 
WTO Member wishing to export to and market in  the EC a product bearing an EC-defined GI 
registered and protected under Regulation No. 2081/92 cannot do so if that WTO Member does not 
have in place an inspection structure consistent with  the requirements of Article 10 of the Regulation.  
Thus, the Regulation is restrictive of trade.  It limits the opportunities for non-EC producers to be able to register an EC-defined GI under the Regulation to those cases where the imported products bearing 
a potentially eligible geographic term originate in  WTO Members with such inspection structures in 
place.  Producers in other WTO Members not having  the same inspection structures in place are not 
able to benefit in trade from the protection afford ed to products bearing registered EC-defined GIs 
under the Regulation.    252. Australia submits that the measure is more trade restrictive than n ecessary.  By prescribing 
"inspection arrangements … equivalent to those laid down in this Regulation", the Regulation 
mandates the type of structure or design
 for inspection that other WTO Members must have in place.  
In doing so, it essentially rules out the acceptability of other types of inspection mechanisms.  The 
                                                      
134 See paragraph 221 above.   WT/DS290/R/Add.1 
Page A-78 
 
 
 Regulation does not even leave open the possibility  of verifying the adequacy of any existing 
inspection structures in other WTO Members before imposing an EC-type "model".  The EC model is 
imposed regardless, even where the inspection stru cture required by Article 10 of the Regulation may 
be inappropriate having regard to the circumstances of another WTO Member.   
 
253. For such a requirement to be necessary to fulf il the EC measure's legitimate objective, the EC 
would have to have determ ined that no other systems  in any WTO Member could in any 
circumstances provide the same degree of assurance  as the EC's system for compliance verification 
and/or enforcement, or for the prevention of deceptive practices.   
 
254. Australia submits that such a determination is not sustainable:  it creates a non-rebuttable 
presumption that all other such systems in place in other WTO Members are deficient in all circumstances compared to the EC's system.  Thus , for example, the EC has determined that other 
WTO Members having in place a system of law th at establishes a general prohibition on misleading 
and deceptive conduct in any commercial and/or f ood safety matters, administered by government 
agencies with wide-ranging investigative and enfor cement powers, cannot provide the same effective 
level of assurance as the EC's system.    255. Further, the EC measure does not allow for the possibility of any inspection structure being 
unnecessary.  There may, for example, be only one producer of an agricultural product or foodstuff 
that could qualify for registration of an EC-def ined GI and who is the sole occupant of the 
geographical region where a good can physically be produced.
135   
 256. Finally, the real problem of unauthorised use and/or deceptive practices concerning an EC-
defined GI relating to a geographical locality in another WTO Member may actually occur in the EC 
itself involving goods from a third WTO Member.  Imposing an inspection structure requirement on 
the WTO Member of production in such circumstances would be meaningless.   
 257. Australia recalls the factors discussed by th e Appellate Body in determining questions of 
necessity in the GATT context, described above.  In  accordance with Appellate Body statements in 
EC – Asbestos , Australia submits that the EC measure is more trade restrictive than necessary because 
an alternative, less trade restrictive measure reasona bly available to the EC exists that would achieve 
the objective of protecting EC-defined GIs in the EC.    258. TBT Article 2.2 requires in relevant part that  "technical regulations shall not be more trade-
restrictive than necessary to fulfil a legitimate objective, taking account of the risks non-fulfilment 
would create".   
 259. There may be risks that could result from non-fulfilment of the objective as described above.  
However, Australia submits that there are alternativ es to the EC inspection structures that can achieve 
the legitimate objectives of the EC measure with the same degree of effectiveness.  A legislative 
regime that prohibits misleading and deceptive commercial practices is one option.  Such a regime 
could include an investigating authority that ensure s that a product is marketed honestly, that is, that 
verifies its authenticity.  This may operate in c onjunction with food labelling laws, enforced by a food 
authority that, among other functions, ensures that fo odstuffs comply with specifications.  Such laws 
and systems which, in order to be enforced must have an inspection procedure in place, can address 
any risks created by non-fulfilment.  The common  law tort of passing off is another way through 
which the prevention of the misuse of IP rights is  addressed.  Industry certifications or self-regulation 
by producers are further possibilities.    
                                                     
 
135 Even if there are only a limited number of pro ducers, the inspection struct ure requirement could be 
meaningless if there is only a limite d geographical region in a WTO Member in which a good can physically be 
produced.    WT/DS290/R/Add.1 
 Page A-79 
 
 
 260. Alone or in combination, there are alternativ es that can ensure compliance with specifications 
to the same degree as the EC inspection structure m odel, thus serving as effectively the Regulation's 
legitimate objectives.  Recognition of the equivalen ce of other systems that perform the function of 
ensuring that products meet specification requireme nts in other WTO Members would be a less trade 
restrictive alternative to imposing the EC-type regime on other WTO Members.   
 261. Australia submits that the EC measure is th erefore more trade restrictive than necessary to 
fulfil a legitimate objective, taking account of the risks non-fulfilment would create.    
D. C
ONCLUSION  
262. The EC measure applies to an identifia ble group or products.  It lays down product 
characteristics or their related processes and production methods, including the applicable 
administrative provisions, with which compliance is mandatory, in respect of:    
• the labelling requirement set out in Artic le 12.2 of Regulation No. 2081/92;  and 
 
• the requirement set out in Articles 4, 10 a nd 12.1 of Regulation No. 2081/92 to have 
in place inspection structures to ensure th at agricultural products and foodstuffs 
bearing a protected name meet the product specification.  
 263. To the extent that the EC measure lays down product characteristics or their related processes 
and production methods, including the applicable ad ministrative provisions, with which compliance is 
mandatory as defined in TBT Annex 1.1, it is a technical regulation for the purpose of the TBT 
Agreement .   
 264. To the extent that Article 12.2 of Regula tion No. 2081/92 is a mandatory labelling provision 
that:   
 
• applies to imported products, whether  
 
o imported products bearing a "protected name" that "is identical to a 
Community protected name", or  
 
o all imported products bearing a "protected name";   
 
and  
• provides no discretion for a different labelli ng regime to apply when necessary to 
avoid less favourable treatment being accorded to imported products;   
 the EC measure is inconsistent  with TBT Article 2.1.   
265. To the extent that Articles 4, 10 and 12.1 of Regulation No. 2081/92 establish a mandatory 
requirement for another WTO Member to have in pla ce in all circumstances an inspection structure as 
set out in Article 10 of the Regulation, the EC me asure is more trade restrictive than necessary to 
fulfil a legitimate objective, taking account of the ri sks non-fulfilment would create, contrary to TBT 
Article 2.2.   
 WT/DS290/R/Add.1 
Page A-80 
 
 
 XI. AS A CONSEQUENCE, THE EC HAS NOT COMPLIED WITH ITS OBLIGATIONS 
UNDER ARTICLE XVI:4 OF THE WTO AGREEMENT 
266. Article XVI.4 of the WTO Agreement  provides:   
 
Each Member shall ensure the conformity of its laws, regulations and administrative 
procedures with its obligations as provi ded in the annexed Agreements.   
267. As a consequence of the EC measure's in consistency with various provisions of the TRIPS 
Agreement , GATT 1994 and the TBT Agreement  and of the EC's failure to observe its obligations 
pursuant to TRIPS Articles 1.1, 2.1 and 65.1, the EC has not ensured the conformity of its laws, 
regulations and administrative procedures with its obligations as provided in the annexed Agreements, 
contrary to Article XVI.4 of the WTO Agreement .   
 
XII. CONCLUSION 
268. Australia requests that the Panel find that th e EC measure is inconsistent with the EC's 
obligations under:   
 
• Articles 1.1, 1.3, 2.1 (incorporating Articles 2(1) and 2(2), 10 bis(1) and 10 ter(1) of 
the Paris Convention (1967)), 3.1, 16.1, 20, 22.2, 24.5, 41.1, 41.2, 41.3, 42 and 65.1 of the TRIPS Agreement ;   
 
• Article III:4 of GATT 1994;   
 
• Articles 2.1 and 2.2 of the TBT Agreement ;  and  
 
• Article XVI.4 of the WTO Agreement ;   
 and that the European Communities should bring the EC  measure into conformity  with its obligations 
under the WTO Agreement , including in respect of the TRIPS Agreement , GATT 1994 and the TBT 
Agreement .   
269. Australia further requests that the Panel find th at, by being inconsistent with those provisions, 
the EC measure nullifies or impairs the benefits accruing to Australia under the TRIPS Agreement , 
GATT 1994, the TBT Agreement  and the WTO Agreement .    WT/DS290/R/Add.1 
 Page A-81 
 
 
 ANNEX A-3 
 
ORAL STATEMENT OF AUSTRALIA 
FIRST SUBSTANTIVE MEETING 
 
(23 June 2004) 
  1. This is the first WTO dispute about those provisions of the TRIPS Agreement relating to 
TRIPS-defined GIs.  Further, it is only the sec ond dispute in which the provisions of the TRIPS 
Agreement on trademarks have been considered in detail.   
 2. As a consequence, this dispute has releva nce for many commercial actors because of its 
potential impact on the economic value of their inte llectual property rights.  Further, many of these 
rights have been acquired against the background of more than 100 years of internationally agreed 
rules on trademarks.   
 3. The WTO dispute settlement system cannot re-w rite the covered agreem ents.  In particular, 
we cannot attribute to the TRIPS Agreement rights and obligations which were not agreed during the 
Uruguay Round negotiations, notwithstanding that par ticipants in those negotiations may have sought 
different outcomes.   
 
4. Notwithstanding that there are some issues being considered for the first time in this dispute, 
at a fundamental, conceptual level this dispute is about four key issues.  These become very clear 
when the EC measure is examined closely – and its practical application understood.   
 
5. Firstly, is the EC treating the nationals a nd products of other WTO Members less favourably 
than it treats its own nationals and products?  The answer is yes.    6. Secondly, with regard to registration and pr otection of EC-defined GIs, has the EC granted 
the rights in respect of trademarks it is obliged to  grant by the TRIPS Agreement?  It has not.  
 
7. Thirdly, is the EC fully implementing its obligations concerning TRIPS-defined GIs?  The 
answer is that it is not doing that either.  8. Finally, in implementing its regime for the re gistration and protection of EC-defined GIs, has 
the EC established certain requirements that are so restrictive that the EC has contravened the TBT 
Agreement?  For anyone concerned with trying to meet the EC's requirements to register an EC-
defined GI from another WTO Member, the answer is "yes".    9. Australia's claims and arguments in this disput e have been set out in detail in our First Written 
Submission.  Australia will of course respond in detail in our written rebuttal submission to the 
arguments put forward by the EC in its First Written Submission.   
 
10. My statement today will therefore focus on some  threshold issues in this dispute:  the measure 
at issue;  the Panel's terms of reference;  and the factual description of the measure.  I will also recap 
some key legal arguments of Australia's First Written Submission taking account of some specific 
issues raised by the EC in its First Written Submission.   
 
11. I now turn to the measure at issue in the di spute initiated by Australia.  The measure at issue 
is essentially the EC regime for the protection of designations of origin and geographical indications 
for agricultural products and foodstuffs, for which Regulation 2081/92 provides the regulatory 
framework. WT/DS290/R/Add.1 
Page A-82  
 
  
12. I want to emphasise that it is an EC measure that Australia is challenging.  As the EC itself 
has stated:  "the subject matter of the present dis pute falls within the exclusive competence of the EC, 
and not of the Member States".
1   
 
13. The EC's arguments that versions of Regul ation 2081/92 before the adoption of Regulation 
692/2003 are outside the Pa nel's terms of reference2 are without merit.  The EC mischaracterises the 
measure at issue as set out in Australia's request fo r the establishment of a panel.  The EC's argument 
equates the meaning of "[and] any amendments thereto (including … Regulation … 692/2003)" to "as 
amended by … Regulation … 692/2003", notwithsta nding the plain language of Australia's panel 
request.   
 14. Australia is not seeking to analyse historical versions
3 of Regulation 2081/92 in a vacuum:  it 
is seeking a remedy in respect of the 640 currently pr otected GIs that the EC is seeking to shield from 
the Panel's scrutiny. 
 
15. Let me be quite clear on the te rms of reference for this dispute.   Australia has asked the Panel 
to determine – within the meaning of DSU Article 12. 7 – whether the EC measure is inconsistent with 
TRIPS Articles 25.4 and 41.1.  To that end, the DS U permits the Panel to c onsider the EC measure's 
consistency with Paris Article 4 and TRIPS Articles 43-49 respectively.  Indeed, such an examination 
is necessary for such a determination.    
 
16. Australia also disagrees with the EC's argumen t that Paris Article 2.2 is outside the Panel's 
terms of reference in this dispute.4  Paris Article 2.2 makes clear the point at which a WTO Member is 
no longer in compliance with its national treatment obligation under Paris Article 2.1.  Thus, Paris 
Article 2.2 needs to be considered with Paris Ar ticle 2.1 as an integral aspect of a WTO Member's 
national treatment obligations, and was properly rai sed as an issue in Australia's panel request.   
 17. I turn now to some factual aspects of Regulation 2081/92.  18. The EC says that Australia misunde rstands Article 12.1 of the Regulation.
5  The EC further 
says that Articles 12.1 and 12.3 do not apply to WTO Members.6   
 
19. The EC's statement is extraordinary.  The EC has consistently led other WTO Members to 
believe that Article 12.1 of Regula tion 2081/92 applies to them.  Confirmation of this can be seen in 
document IP/Q2/EEC/1 of 1 October 1997 – the re view of the EC's legislation on trademarks, 
geographical indications and industrial designs.  In pa rticular, I draw the Panel's attention to the EC's 
answers to the first question from India and the fourth question from New Zealand.   
 20. Further, in 2002, the EC was considering the changes to Regulation 2081/92 which were 
eventually adopted in Regulation 692/2003.  An EU press release at the time said:   
 
"… [T]o improve protection of European  quality products outside the EU … non-EU 
countries … would be invited to do so on a reciprocal basis.  If a non-EU country 
introduced an equivalent system including the right of objection for the EU and the 
                                                     
 
1 First Written Submission of the EC, paragraph 255.   
2 First Written Submission of the EC, paragraph 15.   
3 First Written Submission of the EC, paragraph 20.   
4 First Written Submission of the EC, paragraphs 36-42.   
5 First Written Submission of the EC, paragraph 65.   
6 First Written Submission of the EC, paragraph 66.    WT/DS290/R/Add.1 
 Page A-83 
 
 
 commitment to protect EU names on their territory, the EU would offer a specific 
procedure to register their products for the EU market."7   
21. DSU Article 11 expressly provides that a pane l should make an objective assessment of the 
facts of the case.  An examination of textual provisions forming part of the measure before it is a proper exercise of the Panel's authority to assess the facts of the case.  So too is consideration of 
whether the EC's explanation of those provisi ons is supported by the relevant texts.   
 22. Australia submits that the Panel should find that  the EC's explanation is not supported by the 
texts of Articles 12 to 12d of Regulation 2081/92, an d that Articles 12.1 and 12.3 must be considered 
to apply to agricultural products and foodstuffs from other WTO Members.   
 
23. Australia further submits that the EC's advi ce that paragraphs 1 and 3 of Article 12 don't 
apply to WTO Members in effect constitutes an admission by the EC that the equivalence and 
reciprocity requirements of those provisions are in consistent with the EC's WTO obligations.   
 
24. The EC has sought to explain the deci sion-making process provided by Article 15 of 
Regulation 2081/92.
8  Australia submits that the EC's explana tion of that process is not accurate.  The 
plain language of Decision 1999/468 indicates that, in significant circumstances, the Commission cannot decide the matter without the consent of either the Committee or the Council, or until the 
Council has been unable to form an opinion for three months.    
25. I turn now to the issue of country of origin la belling.  The EC's explanation that the country of 
origin labelling requirement in Article 12.2 can apply to both the third country and EC names
9 is not 
convincing.    26. Australia submits that the Panel should find that  the EC's explanation of the country of origin 
labelling requirement in Article 12.2 is not supported by the actual text of Article 12.2, particularly 
when read together with Article 6.6.  As the EC admits,
10 the registration of an EC-defined GI from 
within the Community that is homonymous with an already registered name is governed by Article 6.6, not Article 12.2.    27. Australia notes the EC's statement that, in respect of the simplified registrations under the 
now repealed Article 17, the EC did not grant to the owner of a registered trademark within the 
territory of the EC the exclusive rights required to have been granted by TRIPS Article 16.1.
11    
 28. I now turn to some of the key legal arguments that have been raised in this dispute.    
29. As I noted earlier, Australia's claims in th is dispute fall into four broad categories:   
 
 •  the rights required to be granted by the EC in respect of trademarks;   
 
 •  the EC's national treatment obligations;   
 
 •  the EC's obligations concerning TRIPS-defined GIs;  and  
 
                                                     
 
7 EU press release, IP/02/422, Brussels, 15 Marc h 2002, to be submitted as Exhibit AUS-04.   
8 First Written Submission of the EC, paragraph 79-83.   
9 First Written Submission of the EC, paragraphs 87-88.   
10 First Written Submission of the EC, paragraph 89.   
11 First Written Submission of the EC, paragraphs 92-97.   WT/DS290/R/Add.1 
Page A-84  
 
  •  the EC's obligations not to make technical  regulations more trade restrictive than 
necessary.   
 
30. For the purposes of brevity, instead of repea ting the arguments made by the United States, I 
will instead note that Australia endorses those  co mments concerning the rights required to be granted 
in respect of trademarks.  I make the following additional comments.   
 31. Australia will respond to the EC's arguments in detail in our written rebuttal.  We want to 
emphasise, however, that Australia fully agrees that GIs are intellectual property rights covered by the 
TRIPS Agreement, and that the TRIPS Agreement establishes no hierarchy between trademarks and 
TRIPS-defined GIs as such.
12   
 32. The real issue is whether the EC measure is inconsistent at Community level  with TRIPS 
Article 16.1.  Australia submits that the co-exi stence standard estab lished by Regulation 2081/92 
effectively deems the territory of the EC Member State of origin of the EC-defined GI to be 
synonymous with the territory of the EC as a whol e.  The co-existence standard ignores the principle 
of territoriality that has underpinned development of  the international regime  for the protection of 
intellectual property.  As the Committee on Legal A ffairs and the Internal Market  of the European 
Parliament has noted, "to deprive a trademark owne r of the exclusive right conferred by Community 
trademark law by obliging him to allow … [coexistence]  … is tantamount to expropriation".
13  
Further, such inconsistency cannot be justif ied by TRIPS Articles 24.5, 24.3 or 17.   
 33. Australia endorses the comments made by the United States concerning the EC's national 
treatment obligations under the TRIPS Agre ement and GATT 1994, and offers the following 
additional comments.  
 
34. The EC says that Australia has not claime d that Regulation 2081/92 violates the national 
treatment obligations of the TRIPS Agreement and th e Paris Convention by requiring that applications 
be transmitted by the country in whic h the geographical area is located.
14  For the record, Australia 
has in fact clearly referred to this requirement in support of its claim that the measure as a whole does 
not accord national treatment to non-EC nationals.15   
 
35. The EC also says that Australia has clai med that Regulation 2081/92 accords less favourable 
treatment because a non-EC right holder has no representative in the Article 15 decision-making process to speak for its interests.
16  For the record, Australia makes this argument in support of its 
claim that the measure as a whole does not accord national treatment to non-EC nationals.17   
 
36. Australia has claimed that the EC breach ed its TRIPS Agreement and Paris Convention 
national treatment obligations by registering more than 120 EC-defined GIs under the normal registration process before 24 April 2003, because the EC did not provide non-EC nationals a right of 
objection.  The registrations of those more than  120 EC-defined GIs – which in any case remain in 
force – clearly form part of the measure at issue in  this dispute.  The EC offers no explanation why 
making a right of objection to persons resident or established in the EC but not to other WTO Member 
                                                     
 
12 Ibid.   
13 Report on the proposal for a Council regulation amending Regulation (EEC) No 2081/92 on the 
protect ion of geographical indications and designations of origin for agricultural products and foodstuffs, Committee on Agriculture and Rural Development, Exhibit COMP-14, page 35.   
14 First Written Submission of the EC, paragraph 127.   
15 First Written Submission of Australia, paragraphs 198-199 and 205.   
16 First Written Submission of the EC, paragraphs 153-155.   
17 First Written Submission of Australia, paragraph 203.    WT/DS290/R/Add.1 
 Page A-85 
 
 
 nationals does not breach its national treatment obligations.  Nor do the EC's arguments about 
retrospective remedies have any merit.    37. Finally, Australia notes that bringing the EC's measure into WTO conformity might not require "undoing" those registrations in the sense th at Australia understands the EC to be meaning.  
The EC might, for example, be able to bring the registrations into conformity by providing for any 
right holders adversely affected by the registrations to  be heard in a civil judicial proceeding, and/or to 
be justly compensated for any tradem arks rights if unsuccessful in overturning particular registrations.   
 38. Australia does not argue that protection of TRIPS-defined GIs against misleading use or use 
which constitutes an act of unfair competition must  be provided at any given territorial level.
18  What 
Australia does argue is that the EC must provide at Community level in respect of the Community level registration of EC-defined GIs the legal means for interested parties:  to prevent misleading use 
of an EC-defined GI;  and use which constitutes an ac t of unfair competition.  This is particularly so 
given that Community law takes precedence over inconsistent Member State law. 
 
39. I turn now to the TBT Agreement, which requi res that technical regulations not result in less 
favourable treatment for imported products than for pr oducts of national origin.  It also requires that 
technical regulations not be "more trade restrictive than necessary".  Australia submits that aspects of 
the EC measure are inconsistent  with both of these obligations. 
 
40. Having regard to the findings of the Appellate Body in EC – Asbestos  and EC – Sardines , 
Australia has shown that the EC measure is, in part , a "technical regulation" within the meaning of the 
TBT Agreement.  To the extent that the EC measu re sets out a mandatory labelling requirement – and 
sets out processes related to product characteristics – for agricultural products and foodstuffs eligible 
to bear a registered EC-defined GI, the measure applies to an identifiable group of products, sets out 
product characteristics, and requires mandatory compliance.   
 41. As the Appellate Body found in Brazil – Desiccated Coconut , the WTO Agreement was 
accepted by WTO Members as a single undertaking, and "all WTO Members are bound by all the rights and obligations in the WTO Agreement and its  Annexes 1, 2 and 3".  The Annexes of course 
include both the TBT Agreement and the TRIPS Agre ement.  Accordingly, a measure implementing 
matters concerning intellectual property rights is not necessarily excluded from the scope of the TBT 
Agreement.    42. The EC argues that Regulation 2081/92 itself "does not allow to identify" products which might be affected by Article 12.2.
19  Australia submits that the EC misunderstands the essential 
distinction made by the Appellate  Body between products that are expressly identified on the one 
hand and those that are identifiable on the other.    43. Similarly, the EC's arguments that Article 12. 2, and Articles 4 and 10 read together, do not set 
out product characteristics are not sustainable.
20  Labelling requirements are explicitly included within 
the scope of a "technical regulation".  Australia submits  that the EC's interpretation of Article 12.2, if 
correct, would render meaningless the concept of a label.21  In addition, the EC argues that the 
purpose of Article 4(g) – read in conjunction with the inspection structure requirement of Article 10 – 
is not to lay down product characteristics.22  Regardless of the EC's intent, Articles 4 and 10 read 
                                                      
18 First Written Submission of the EC, paragraphs 401 and 415.   
19 First Written Submission of the EC, paragraph 447.   
20 First Written Submission of the EC, paragraphs 448-452 and 459-466 respectively.   
21 First Written Submission of the EC, paragraph 451.   
22 First Written Submission of the EC, paragraph 461.   WT/DS290/R/Add.1 
Page A-86  
 
 together have the effect of establishing a pro cess related to product ch aracteristics within the 
definition of a technical regulation.    44. Finally, the EC's argument that the re quirements concerning labelling, and concerning a 
process related to product characteristics, are not ma ndatory is not supported by the plain text of the 
provisions.   
 45. It remains Australia's claim that imported pr oducts bearing an EC-defined GI are treated less 
favourably than "like" domestic products in the circumstances in which Article 12.2 of Regulation 
2081/92 applies.   
 
46. Australia also maintains its claim that th e EC measure is "more trade restrictive than 
necessary" because it obliges other WTO Members to have in place the same type of inspection 
structures as those mandated for the EC by Regulation 2081/92.  The EC has failed to explain why other WTO Members' systems for compliance verifica tion and/or enforcement, or for the prevention 
of deceptive practices, can never provide the EC's required degree of assurance.   
 47. There are many other issues that could be discu ssed in this statement.  However, for the sake 
of brevity and given the processes ah ead in this dispute, I will concl ude Australia's statement at this 
point.  I look forward to providing further detail through questions and answ ers, and in our written 
rebuttal statement.   
 
  WT/DS290/R/Add.1 
 Page A-87 
 
 
 ANNEX A-4 
 
REPLIES BY AUSTRALIA TO QUESTIONS POSED BY THE PANEL 
AND THE EUROPEAN COMMUNITIES TO THE COMPLAINING PARTIES 
FOLLOWING THE FIRST SUBSTANTIVE MEETING 
 
(8 July 2004) 
   1. To what extent is the Panel bound by the EC's interpretation of its own Regulation?   USA, 
AUS, EC  
 
The Panel is not bound by the EC's interpreta tion of Regulation No. 2081/92 to any extent.   
 
In EC – Hormones , the Appellate Body said:  "[s]o far as f act-finding by panels is concerned, … the 
applicable standard is neither de novo  review as such, nor 'total deference', but rather the 'unbiased 
assessment of the facts'".
1  This standard has been applied in all subsequent disputes (other than in 
those concerning the Anti-Dumping Agreemen t).  Moreover, the EC itself said, in Korea – Alcohol , 
that "the 'deferential' standard of review … finds no support in either the DSU or the GATT 1994".2   
In India – Patents , India argued that the Panel should have given India the benefit of the doubt as to 
the status of the measure at issue under Indian domest ic law.  The Appellate Body found:  "[i]t is clear 
that an examination of the relevant aspects of Indian municipal law … is  essential to determining 
whether India has complied with its obligations …  There was simply no way for the Panel to make 
this determination without engaging in an examination of Indian law.  …  To say that the Panel should 
have done otherwise would be to say that only India can assess whether Indian law is consistent with 
India's obligations under the WTO Agr eement.  This, clearly, cannot be so."3   
 Australia submits that the obligation on the Pane l in regard to the interpretation of Regulation 
No. 2081/92 includes an appraisal of whether the interpretation being put forward by the EC is 
supported by the text of the Regulati on having regard to all relevant f actors, including the plain text of 
the relevant provisions, explanations of the Regulation's applicability to other WTO Members 
previously offered by the EC, and the EC's failure to explain interpretive inconsistencies in its newly 
proffered interpretation.   
 
2. Can the procedures under Articles 5 and 6 of Re gulation (EC) No. 2081/92 apply to names of 
geographical areas located outside the EC?   EC 
 
3. Did the phrase "[w]ithout prejudice to international agreements" in Article 12(1) of 
Regulation (EC) No. 2081/92 predate the TRIPS Agreem ent?  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 
 
4. 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 
 
                                                     
 
1 EC – Hormones , Report of the Appellate Body, paragraph 22.   
2 Korea – Taxes on Alcoholic Beverages , Report of the Appellate Body, paragraph 68.   
3 India – Patent Protection for Pharmaceutical and Agricultural Chemical Products , Report of the 
Appellate Body, WT/DS50/AB/R, paragraphs 64-66.   WT/DS290/R/Add.1 
Page A-88  
 
 5. 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 bilat eral and other international agreements.   USA  
 
6. 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  
 
Within a different legal system and within a differe nt context, this phrase could be read as a reference 
to ensuring the primacy of the WTO Agreement.  However, in the context in which it is used 
Australia understands the phrase "without prejudice to  international agreemen ts" in Article 12.1 of 
Regulation No. 2081/92 was intended to allow for an  international agreement – whether bilateral or 
plurilateral – to incorporate conditions different to those strictly required by Article 12.1.  Australia 
further understands that the phrase does not – and was not intended to – incorporate the EC's 
obligations as a party to the WTO Agreement.   
 Australia's understanding of the phrase is based on the EC's earlier statements in TRIPS Council,
4 as 
well as statements by the Commission and by Committees of the European Parliament.  Moreover, according to a presentation by an official of th e European Commission at a WIPO National Seminar 
on the Protection of Trademarks and Geographi cal Indications in Beirut in March, 2003,
5 non-EU 
countries "can seek recognition for your country be fore the EU based on the fact that you have a 
system reciprocal to that of the EU.  If your sy stem protects GIs similarly (enforcement, level of 
protection), our registration system will be open to your GIs.  You can conclude a bilateral agreement 
with the EU and all your GIs will be protected in Eu rope at once.  EU authorities will take care of the 
defense [sic]  of your GIs (as well)".6   
 
Australia's understanding was reinforced by the EC's answer to a specific question on this very issue 
asked by Australia in our dispute settlement consultations.7   
 Further, in requesting the establishment of a panel,  Australia expressly set out its understanding that 
Article 12.1 of Regulation No. 2081/92 established c onditions of reciprocity and equivalence for the 
registration of EC-defined GIs from non-EC WTO Members.
8  Yet the EC did not seek to correct 
Australia's "misunderstanding" at either the 29 Au gust or 2 October 2003 meetings of the DSB.   
 Moreover, Australia notes that the ECJ has found tha t:  "… 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 …  It is only where the Community has intended to implement a particular 
obligation assumed in the context of the WTO, or where the Community measure refers expressly to 
the precise provisions of the WTO agreements, that it is for the Court to review the legality of the 
Community measure in question in the light of the WTO rules".
9   
 The phrase "[w]ithout prejudice to international agreements" in Article 12.1 of Regulation 
No. 2081/92 pre-dates the entry into force of the WTO Agreement:  the phrase therefore cannot have 
                                                     
 
4 For example, "Review of Legislation on Tradem arks, Geographical Indications and Industrial 
Designs:  European Communities", document IP/Q2/EEC/1.   
5 WIPO document WIPO /TM/BEY/ 03/11B, Exhibit AUS-05, attached.   
6 Exhibit AUS-05, Slide 15, attached.   
7 See question 12 of "Questions from Australia", Exhibit AUS-06, attached.   
8 WT/DSB/M/155, paragraph 74.   
9 Case C-93/02 P, Biret International SA v. Council of the European Union , Judgment of the ECJ of  
30 September 2003, Exhibit AUS-07, attached.    WT/DS290/R/Add.1 
 Page A-89 
 
 
 been intended to implement an obligation assumed in  the context of that Agreement.  Nor does the 
Community measure refer expressly to a precise pr ovision of the WTO Agreement so as to enable 
Regulation 2081/92 to be considered in the light of a particular WTO obligation established by that 
provision.    
Thus, the existing jurisprudence of the ECJ in f act precludes the EC's explanation that the phrase 
"[w]ithout prejudice to international agreements" enables the EC to apply Articles 12.1 and 12.3 of Regulation No. 2081/92 consistently with its WTO obligations.    
7. 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 applicability of Article 12a?   EC 
 
8. 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 co ntext of each reference, 
indicates what "third country" means ?  Why are different terms not used?   EC  
 
9. 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 memb er country"?  Is it relevant that Regulation 
(EC) No. 692/2003 explained, in its 10
th recital, that in the matter of objections the provisions in 
question apply without prejudice to international agreements 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 
 
10. Has the Commission recognized any countries under the procedure set out in Article 12(3) of 
Regulation (EC) No. 2081/92?  Have any c ountries requested to be recognized under that 
procedure?  EC 
 
11. Has an application for registration under Re gulation (EC) No. 2081/92 ever been made in 
respect of the name of a geographical area loca ted outside the EC?  If so, what happened?   EC 
 
12. Has any group or a natural or legal pers on 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  
 
To the best of Australia's knowledge, it has not been sent such an application.  As Australia noted in 
the first meeting of the parties with the Panel,  Australia has not established any mechanism for 
identifying and/or receiving such information.  Au stralia – consistent with the express preambular 
provision to the TRIPS Agreement – recognises intellectual property rights as private rights:  in the absence of express commitments voluntarily entered in to by Australia at international level which 
could require it to send such an application, Australia has not had any reason to seek such 
information.  Further, Australian stakeholders  would be aware, including because of previous 
statements by the EC, that they could not seek such  registration given the reciprocity and equivalence 
conditions of Regulation No. 2081/92.   
 
13. What discretion does the Commission enjoy in the application of Regulation (EC) 
No. 2081/92?   EC 
 
14. 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   
 WT/DS290/R/Add.1 
Page A-90  
 
 In US – 1916 Anti-Dumping Act , the Appellate Body considered that the reason it had to be possible 
to find legislation as such to be inconsistent with a GATT 1947 Contracting Party's obligations had 
been provided by the panel in the United States – Superfund  dispute under GATT 1947.
10  The panel 
in that GATT dispute explained:    
[the provisions of the GATT 1947] are not only to protect current trade but also to 
create the predictability needed to plan fu ture trade.  That objective could not be 
attained if contracting parties could no t challenge existing legislation mandating 
actions at variance with the General Agreement until the administrative acts 
implementing it had actually been applied to their trade.   
Many of a WTO Member's obligations under the TR IPS Agreement are expressed in terms of the 
minimum standards of rights to be conferred and of processes to be made available in respect of categories of intellectual property.  Thus, in some  situations, it may be appropriate to apply in a 
different manner the Appellate Body's finding in th e context of a covered A nnex 1A agreement that 
"the relevant discretion, for purposes of dis tinguishing between mandatory and discretionary 
legislation, is a discretion vested in the executive branch  of government"
11 (emphasis in original) .  For 
example, Australia submits that the issue in the context of TRIPS Article 42 should more 
appropriately be considered to be whether a WTO Me mber has vested in its judiciary the authority to 
enforce intellectual property rights covered by the TRIPS Agreement.    Nevertheless, in Australia's view, the principl es that underpinned the GATT panel's statement in 
United States – Superfund  remain valid in the context of the TRIPS Agreement.  In relation to the 
specified categories of intellectual property right s, the provisions of the TRIPS Agreement are 
intended to protect current rights and to create the predictability needed for the future protection of 
such rights.  Further, that objective could not be  achieved if WTO Members could not challenge the 
absence of mechanisms needed to attain the benefit of that protection in relation to a particular 
intellectual property right.   
 
15. What would be the most authoritative statement of the interpretation of Regulation (EC) 
No. 2081/92?  Is a statement by the EC delegatio n to this Panel legally binding on the European 
Communities?  EC 
 
16. 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 satisfyi ng its equivalence and reciprocity conditions?   EC 
 
17. 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 
 
18. Did the EC member States agree with the Co mmission'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 
                                                     
 
10 US – 1916 Anti-Dumping Act , Report of the Appellate Body, paragraph 88, referring to United States 
– Taxes on Petroleum and Certain Imported Substances ("United States – Superfund"),  adopted 17 June 1987, 
BISD 34S/136.   
11 US – 1916 Anti-Dumping Act , Report of the Appellate Body, paragraph 89.    WT/DS290/R/Add.1 
 Page A-91 
 
 
 Regulation of the name of a geographical area located in a third country WTO Member because that 
Member does not satisfy the equivalence and reciprocity conditions of Article 12(1)?   EC 
 
19. Has a judicial authority ever ruled on the avail ability 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 Artic le 12(1) of the Regulation?   EC 
 
20. 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 /or Article III:4 of the GATT 1994?   EC   
 
21. 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 paragraphs 243- 244 of the EC's first written 
submission?   USA, AUS, EC  
 
Australia cannot speak for Switzerland, but notes th at a paper by the Swiss Federal Institute of 
Technology Zurich concerning the protection of EC-defined GIs in Switzerland contains the 
following statement:    
[Regulation No. 2081/92]  gave countries outside the European Community an 
opportunity to have their own products r ecognised and protected within the EC, 
provided those countries already had similar protection legislation in place
[footnote 3].   
_______________________________________ Footnote 3:  Preamble to Regulation (EEC) 2081/92 of 14 July 1992.
12   
This statement indicates an understanding on the pa rt of Switzerland that Regulation No. 2081/92 
required that non-EC countries have in place at least a similar level of protection to that provided by 
Regulation No. 2081/92.   
 
22. Are there any legal requirements or other prov isions in EC or national laws which ensure 
that groups or persons entitled to apply for reg istration 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 registrati on pursuant to Article 5(1)?   USA, AUS, EC  
 
Australia is not aware of any legal requirements or  other provisions in EC or national laws which 
ensure that groups or persons entitled to appl y for registration under Article 5 of Regulation 
No. 2081/92 are always EC citizens or EC legal pers ons.  At the same time, however, Australia notes 
the view of the EC that "geographical indications are the common patrimony of all the producers of a 
certain area, and ultimately of the entire population of that area".13   
 
                                                      
12 "The Protected Denomination of Origin and Geographical Indication Legislation in Switzerland:  
Institutional Aspects", Swiss Federal Institute of Technology Zurich, financed by the Office federal de l'éducation et de la science, November 1998, page 8, Exhibit AUS-07.   
13 First Written Submission of the EC, paragraph 307, 4th bullet point.   WT/DS290/R/Add.1 
Page A-92  
 
 Having in mind the requirement of Article 5.4 th at "[t]he application shall be sent to the [EC]  
Member State in which the geographical area is located
", an individual non-EC citizen or legal person 
could normally only qualify to apply for registration pursuant to Article 5.1 as part of a group within 
the meaning of that provision.  Australia submits th at the effect of the requirement of Article 5.4 – 
especially when interpreted in the light of the EC's view of the nature of a geographical indication – is 
that groups or persons entitled to apply for regist ration under Article 5 will almost always comprise 
EC citizens and/or legal persons.    
23. 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  
 
The 1900 Brussels Revision Conference of the Paris Convention unanimously agreed that Paris 
Article 2.1 applies to legal persons or  entities, as well as to natural persons.
14  It was implicit in that 
decision that – for the purposes of the Paris Conventi on – a national in the context of a natural person 
was considered to be, and remains, a person who is  a "national" of a state in accordance with that 
state's laws.    That decision of the parties to the Paris Convention continues to have effect in the context of the 
TRIPS Agreement through the provisions of TRIPS Artic le 1.3, which provides in relevant part:  "[i]n 
respect of the relevant intellectual property right, th e nationals of other Members shall be understood 
as those natural or legal persons that would meet th e criteria for eligibility for protection provided for 
in the Paris Convention (1967) …".  In any case, th at decision continues to be relevant to a WTO 
Member's obligation to comply with Paris Article 2 through the operation of TRIPS Article 2.1.   
 
Further, the intent of the negotiators in this rega rd is confirmed by Footnote 1 to TRIPS Article 1.3, 
which reflects recognition on the part of the negotiato rs of the TRIPS Agreement that the situation of 
a separate customs territory Member of the WTO required special consideration.  Natural persons could not normally be a national of a separate cust oms territory in the sense of having the citizenship 
of that territory:  thus a definition of a national th at took account of expected circumstances in relation 
to a separate customs territory WTO Member was included.   
 In Australia's view, the term "nationals" as used in Article 1.3, including footnote 1, Articles 3.1 and 4 
of the TRIPS Agreement and Paris Article 2 means:    
• in the case of natural persons in accordance w ith the laws of the WTO Member of which 
nationality is claimed, either:   
 
o persons who possess the nationality of a state in accordance with that state's laws, 
and/or  
 
o persons who are domiciled or who have a r eal and effective industrial or commercial 
establishment in a separate customs terr itory WTO Member (as a proxy for the 
ordinary notion of nationality);   
  and   
                                                     
 
14 Bodenhausen , page 27.    WT/DS290/R/Add.1 
 Page A-93 
 
 
 • in the case of legal persons, such persons – whet her companies, associations or other entities 
recognised in accordance with th e laws of the WTO Member – who are domiciled or who are 
established in that WTO Member in accordance with the laws of the WTO Member of which 
nationality is claimed.   
 
Thus, a WTO Member's nationals normally include  natural persons who ar e domiciled, or legal 
persons who have a real and eff ective industrial and commercial establishment, in that Member.  
Australia notes, however, that these categories of pe rsons would not always qualify as nationals.   
 
24. In your view, which natural or legal pers ons 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 
 
"Interested parties" in the sense of TRIPS Article  22.2 cannot be construed so narrowly so as to 
exclude the possibility of legal action in relation to any use of a TRIPS-defined GI which could 
constitute an act of unfair competition within the meaning of Paris Article 10 bis.  As provided by 
Paris Article 10 bis.2, "[a]ny act of competition contrary to honest practices in industrial or 
commercial matters constitutes an act of unfair competition".    "[H]onest practices in industrial or commercial ma tters" within the meaning of Paris Article 10 bis.2, 
however, includes the notion of honest prac tices established in international trade.
15  Thus, "interested 
parties" in the sense of TRIPS Article 22.2 must be  capable of encompassing parties with an interest 
in honest practices in industrial or commercial matters in international trade.   
 Further, it cannot be presumed that legal action w ithin the meaning of TRIPS Article 22.2 will only 
ever involve action to protect a TRIPS-defined GI against misleading use or use which constitutes an 
act of unfair competition.  Having regard to the pr inciple of territoriality and to developments in 
international trade over time, recognition of a TRI PS-defined GI – whether through registration or 
some other system – could in some circumstances result in misleading use or use which constitutes an 
act of unfair competition.  For example, it is entir ely possible that there are products which, while 
originally based on European production processes, ha ve been further developed and refined outside 
the European country of origin and which have su bsequently come to represent the "international" 
trading standard for that product:  to register the original geographic name under Regulation 
No. 2081/92 in such circumstances – notwithstanding  that the product may qualify for registration – 
could well constitute misleading use or use which c onstitutes an act of unfair competition within the 
meaning of TRIPS Article 22.2 even within the EC.  Th is type of action is clearly contemplated by the 
text of TRIPS Article 22.2.    
Thus, the categories of persons identified in Paris Ar ticle 10.2 could be "interested parties" within the 
meaning of TRIPS Article 22.2.  On the other hand, "interested parties" within the meaning of TRIPS 
Article 22.2 must be able to include a broader sp ectrum of persons than just those categories.  
Moreover, Australia notes that the scope of Pa ris Article 10.2 concerns  goods which use a false
 
indication of the source of the goods or of the identity of the producer, manufacturer or merchant.  
That is, Paris Article 10.2 concerns acts which involve deceptive conduct.  Misleading use or use 
which constitutes an act of unfair competition need not necessarily involve such deceptive conduct.   
 
25. Is it appropriate to compare nationals who are in terested 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  
                                                      
15 See, for example, Bodenhausen , page 144, and "Model Provisions on Protection Against Unfair 
Competition", Articles and Notes presented by the International Bureau of WIPO, Geneva 1996, paragraph 1.02, 
Exhibit AUS-08, attached.   WT/DS290/R/Add.1 
Page A-94  
 
  
Yes.    The TRIPS Agreement is premised on the continuati on of the principle of territoriality that has 
underpinned the development of the international in tellectual property regime over the past 120 years 
and more.  The TRIPS Agreement establishes minimum standards which each WTO Member must 
provide in respect of each category of intellectual property identified in the Agreement, but otherwise 
accords to a WTO Member a degree of discretion to  determine matters concerning the availability, 
scope and use of intellectual property rights.  Mo reover, TRIPS Article 1.1 expressly provides that a 
WTO Member may implement in its law more extensiv e protection than is required to be provided by 
the TRIPS Agreement, provided that such protection does not otherwise contravene the Agreement.   
 However, the target, or "object", of the TRIPS Agreement – consistent with its title "Agreement on 
Trade-Related Aspects
 of Intellectual Property Rights" , and with TRIPS Article 1.3 – is the "nationals 
of other Members".  Further, in exercising the discretion permitted by the TRIPS Agreement, a WTO 
Member has an overarching obligation under TRIPS Ar ticle 3.1 to accord to the nationals of other 
WTO Members treatment no less favourable than that  it accords to its own nationals with regard to 
the protection of intellectual property.  That prot ection includes – but is not limited to – matters 
affecting the availability, acquisition, scope, main tenance and enforcement of intellectual property 
rights as well as those matters affecting the use of those rights specifically addressed in the TRIPS Agreement.   
 
Moreover, the fact that GIs may refer to areas locat ed in different WTO Members does not mean that 
the treatment accorded to persons seeking to be nefit from the protection being offered by a WTO 
Member must be inherently different.  Where a WT O Member offers more extensive protection for a 
category of intellectual property right than that requ ired to be granted by the TRIPS Agreement, the 
treatment of the persons – whether natural or lega l – seeking to benefit from that protection must still 
accord with that Member's national treatment – and most favoured nation – obligations.   
 
26. 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  
 
Australia is not contending that location may not in any circumstance be a relevant issue in relation to 
an intellectual property right – if that is the prem ise of this question.  However, it is Australia's 
contention that the location of a geographical area is not a permissible basis to derogate from the EC's 
national treatment obligations in the contex t and circumstances of this dispute.   
 
27. Can the Panel assume that it is likely 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  
 
If the term "interested parties" in this question is be ing used in the sense of persons with an interest in 
securing the registration of the name of a geographical  area – whether from within or outside the EC – 
under Regulation No. 2081/92, Australia considers th at the Panel can assume that such interested 
parties are likely to be nationals of the WTO Memb er in which the geographical area is located.   
 If, however, the term "interested parties" is being used in this question in the sense of TRIPS Article 
22.2, in Australia's view the Panel cannot
 assume it likely that "interested parties" in relation to names 
of geographical areas located in a WTO Member are nationals of that Member:  the context of TRIPS  WT/DS290/R/Add.1 
 Page A-95 
 
 
 Article 22.2 necessitates a broader meaning be given to  the phrase.  See also Australia's response to 
Question 24 above.    Similarly, if the term "interested parties" is being used in this question in the sense of persons with an 
interest in preventing the registration of the na me of a geographical area – whether because of the 
existence of trademark rights or because the name is considered to be generic or for some other reason 
– in Australia's view the Panel cannot
 assume it likely that "interested parties" in relation to the 
proposed registration of a name of a geographical area will be nationals of the WTO Member in which the geographical area is located.    
Australia has not sought systematically to gather da ta on numbers of Australian "interested parties" in 
relation to the potential registration of names of geographical areas located within, and outside, the 
EC under Regulation No. 2081/92.  Australia is, how ever, aware of potential "interested parties" 
within Australia in all three of the situations outlined above.    28. 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  
 
Australia does not have a system for the registration of GIs as a separate category of intellectual property other than for wines, and protection TR IPS-defined GIs is provided through a number of 
means.   
 Under the Australian Trade Marks Act, however, TR IPS-defined GIs for agricultural products or 
foodstuffs may be registered as certification trademarks .  Pursuant to the provisions of that Act, for 
example, the terms "Stilton", "Grana Padano" a nd "Parmigiano Reggiano" – which are recognised 
EC-defined GIs under Regulation No. 2081/92 – have b een registered as certification trademarks in 
Australia.    Australia does not otherwise have any informati on on the numbers of EC nationals who may be 
"interested parties" in relation to the protection of  GIs within Australia for agricultural products and 
foodstuffs other than wines and spirits.   
 
29. 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 (EC) No. 2081/92 also open to challenge under 
Article 3.1 of the TRIPS Agreement desp ite its apparently national-neutral text?   EC 
 
30. 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   
 
For matters relevant to this dispute, they can be.   
 
However, notwithstanding that Australia itsel f has used the words "incorporated" and "WTO 
Member" as quick references to the obligations est ablished by TRIPS Article 2.1 in relation to the 
Paris Convention and to "country of the Union" resp ectively in its First Written Submission, Australia 
notes that TRIPS Article 2.1 provides that WTO Members "shall comply with" Paris Article 2.1, 
rather than incorporating that provision.   
 
31. What is the respective scope of the national t reatment obligations in Article 2(1) of the Paris 
Convention (1967) and Article 3.1 of the TRIPS Agreement?  Do they overlap?   USA, AUS, EC  
 WT/DS290/R/Add.1 
Page A-96  
 
 Paris Article 2.1 provides that nationals of any count ry of the Union shall enjoy in all other countries 
of the Union the "advantages" granted by those co untries to nationals.  On the other hand, TRIPS 
Article 3.1 provides that each WTO Member shall accord to the nationals of other Members "treatment" no less favourable than that it accords to its own nationals.    
Australia notes that "treatment" encompasses a broade r spectrum of action than "advantages", that is, 
the notion of "treatment" includes "advantages", but could also include disadvantages or costs.  
Further, having regard to the fi ndings of the Appellate Body in Korea – Beef ,
16 "treatment no less 
favourable" within the meaning of TRIPS Article 3. 1 would not preclude formally different treatment 
by a WTO Member of its own nationals and the nati onals of other WTO Members.  Paris Article 2.1, 
on the other hand, requires a country of the Union to  allow the nationals of all other countries of the 
Union to enjoy the same advantages as a country of the Union grants to its own nationals.    Thus, while there is an overlap be tween the obligations of Paris Article 2.1 and TRIPS Article 3.1, the 
obligations are not necessarily identical.   
 
32. If Regulation (EC) No. 2081/92 grants different 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  
 Imported products eligible to bear an EC-defined GI are treated less favourably than like domestic 
products eligible to bear an EC-defined GI because the imported products must overcome extra 
hurdles to the registration of a geographical name from another WTO Member as an EC-defined GI.
17  
Further, Regulation No. 2081/92 as a whole results in such cumulative and sy stemic less favourable 
treatment to the registration of a geographical name  from another WTO Member as an EC-defined GI 
that it is, in effect, not possible to register an EC-defined GI for an imported product under the 
regulation unless that other WTO Member also operates a similar system of registration and protection of EC-defined GIs.
18   
 In US – Section 211 , the Appellate Body cited with approva l the finding of the panel in the GATT 
dispute US – Section 337  that:  "… while the likelihood of ha ving to defend imported products in two 
fora is small, the existence of the possibility is in herently less favourable than  being faced with having 
to conduct a defence in only one of those fora".
 19   
 Regulation No. 2081/92, on its face, imposes the r eality – not even just the likelihood – of extra 
"hurdles" to the registration – and thus protection – of an EC-defined GI for an imported product 
which do not apply to the registration – and thus pr otection – of an EC-defined GI for a like domestic 
product.  Given the benefits of protection under th e Regulation claimed by the EC, these extra hurdles 
significantly modify the conditions of competiti on for imported products vis-à-vis like domestic 
products.    
33. 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 
                                                     
 
16 Korea – Measures Affecting Imports of Fresh, Chilled and Frozen Beef , Report of the Appellate 
Body, WT/DS161/AB/R, WT/DS169/AB/R, paragraph 137.   
17 First Written Submission of Australia, paragraphs 165-175.   
18 First Written Submission of Australia, paragraphs 176-180.   
19 United States – Section 211 Omnibus Appropriations Act of 1998 , Report of the Appellate Body, 
WT/DS176/AB/R, paragraph 263, referrin g to the report of the GATT panel in United States – Section 337 of 
the Tariff Act of 1930 , adopted 7 November 1989, BISD 36S/345, paragraph 5.19.    WT/DS290/R/Add.1 
 Page A-97 
 
 
 Member State or authorities of a third country in which the geographical area is located, rather than 
directly to the Commission?  EC 
 
34. 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 
 
35. 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 
 
36. Has any person ever sent an objection to the 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  
 To the best of Australia's knowledge, it has not been  sent such a statement of objection.  As Australia 
noted earlier (question 12 above), it has not established any mechanism for identifying and/or 
receiving such information.  Australia – consiste nt with the express preambular provision to the 
TRIPS Agreement – recognises intellectual property right s as private rights:  in the absence of express 
commitments voluntarily entered into by Australia at  international level whic h could require it to send 
such a statement of objection, Australia has not had any reason to seek such information.   
 
37. Please indicate examples of ot her international arrangements, such as the Madrid Protocol, 
under which national governments cooperate by acting as agents or intermediaries in the protection 
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  
 
Australia is not aware of any such arrangements th at require cooperation by a national government in 
the absence of the express consent of that government to act in the capacity of agent or intermediary 
in the protection of private rights.    38. 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  
 As a temporary measure pending the outcome of this dispute, Australia would most certainly send an 
objection to a proposed registration under Regulati on No. 2081/92 to the EC Commission if the 
Australian Government were to become aware of  such an objection.  Longer term, however, 
Australia's view is that the EC has an obligatio n pursuant to the TRIPS Agreement to provide the 
means for intellectual property right holders to ex ercise their rights without intervention by another 
government.   
 
Further, while Australia would certainly send an app lication for registration of an EC-defined GI from 
within Australia were the Australian Government to become aware of such an application, Australia 
could not state positively that it could meet the e quivalence and reciprocity requirements of the 
Regulation, even as a temporary measure pending the outcome of this dispute.  For example, it may 
be that Australia could not "provide protection e quivalent to that available in the Community to 
corresponding agricultural products for [sic]  foodstuffs coming from the Community" because of the 
existence of a trademark right in respect of a corresponding agricultural product or foodstuff, or because an EC-defined GI for a co rresponding agricultural product or f oodstuff is considered to be a 
generic term within the territory of Australia.  Si milarly, Australia may not have in place "inspection WT/DS290/R/Add.1 
Page A-98  
 
 arrangements … equivalent to those laid down in th is Regulation" for the product at issue.  Thus, 
Australia may not have the ability to satisfy the requirements of the Regulation in some instances 
unless it were willing to provide a false cer tification, which it would not do.   
 
39. Does an EC member State participate in decision-making on a proposed registration either in 
the Committee established under Article 15 of Regula tion (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 applica tion which it transmitted?   EC 
 
40. How many applications to register names under Regulation (EC) No. 2081/92 have been 
considered by the Committee established under Arti cle 15 of the Regulation or the Council of 
Ministers?   EC 
 
41. In paragraph 137 of your first written submissi on, 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), an d that this means that the requirement 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 "protected" in the phrase "a protected name of a 
third country"? 
(b) does the phrase "a Community protected 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 count ry 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 
 
42. If Article 12(2) of Regulation (EC) No. 2081/ 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, w hat is the difference in its scope co mpared to Article 6(6) of the 
Regulation?  Why is it necessary to cover this situation in both provisions?   EC 
 
43 Where does Regulation (EC) No. 2081/92 prov ide 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 
 
44. 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 applied on the basis of the date of registration?  EC 
 
45. With respect to paragraph 13 5 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 
  WT/DS290/R/Add.1 
 Page A-99 
 
 
 46. Has a judicial authority ever ruled on the app licability 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 
 
47. Are you aware of any GIs registered under Regulation (EC) No. 2081/92 that are identical or confusingly similar to Community protect ed trademarks owned by your own nationals?   USA, AUS  
 
No.    48. 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  
 
49. Do you seek separate rulings on the procedural 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  
 
DSU Article 3.7 provides in relevant part that:  "[ t]he aim of the dispute settlement mechanism is to 
secure a positive solution to a dispute".  With that in  mind, Australia requests that the Panel's findings 
be sufficiently detailed so as to facilitate a positive so lution to the current dispute, including in respect 
of the procedural aspects at issue.    
50. In paragraph 451 of its fi rst written submission, the EC ar gues that labels which address the 
geographical origin of a product cannot be considered a technical regulation under the TBT 
Agreement, since they do not apply to a "product, process 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 with respect to labels depend on the content of the 
labels?   EC 
 
51. How should the term "like products" be interp reted under Article 2.1 of the TBT Agreement?  
If the labelling requirement in Article 12(2) of Re gulation (EC) No. 2081/92 applies to situations 
where identical names arise between imported pr oducts 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" rath er than a distinction between "like products"?   AUS, EC  
 In Australia's view, the TBT Agreement is – in part – an elaboration of the provisions of GATT 
Article III:4.  Consequently – and having regard to the findings of the Appellate Body in EC – 
Asbestos  concerning the meaning of "like products " in GATT Article III:4 and in the covered 
agreements more generally
20 – Australia considers that the meaning of "like products" in TBT 
Article 2.1 is substantively the same as in GATT Article III:4.   
 
Australia notes that TBT Article 2.1 would not be a pplicable to situations involving identical names 
for two EC products.  However, to the extent th at Article 12.2 of Regulation No. 2081/92 mandates 
less favourable treatment for an imported product bear ing a later registered EC-defined GI than that 
accorded to a domestic like product bearing an earlier re gistered EC-defined GI, it is inconsistent with 
the EC's obligation pursuant to TBT Article 2.1.    
                                                     
 
20 European Communities – Measures Affecting Asbestos and Asbestos-Containing Products , Report of 
the Appellate Body, WT/DS135/AB/R, paragraphs 84-100.   WT/DS290/R/Add.1 
Page A-100  
 
 52. Does Australia allege that Article 12(2) of Regulation (EC) No. 2081/92 provides any less 
favourable treatment to imported products besides labelling costs?   AUS  
 
No.    53. The EC argues in paragraph 88 of its first wr itten submission that Artic le 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  
 If the EC were to interpret Article 12.2 of Regul ation No. 2081/92 in the manner specified, this could 
be expected to overcome the provision's inconsistency with TBT Article 2.1.   
 Australia submits, however, that such an interpretati on would be contrary to the plain text of Article 
12.2 of the Regulation, which expressly relates to a situation where the later registered name is "a 
protected name of a third country".  Further, as l ong as the provision is drafted in its current form, the 
EC is not bound to apply the interpretation it has offered, as the ECJ would enforce the specific terms 
of the Regulation were the EC's interpretati on to be the subject of a legal action.   
 
54. 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 avoi d those risks of confusion?   EC 
 
55. Does the TRIPS Agreement apply as lex 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  
 
A special rule does not necessarily exclude the appli cation of a general rule.  Instead, two such rules 
may apply cumulatively, with the special rule preva iling only to the extent of any conflict between the 
two rules.    Australia notes that, in Korea – Dairy Safeguard , the Appellate Body cited with approval the Panel's 
statement that:  "… the WTO Agreement is a 'Singl e Undertaking' and therefore all WTO obligations 
are generally cumulative and Members must co mply with all of them simultaneously …
 […]", 
considering that this finding was supported by Ar ticle II:2 of the WTO Agreement on the integrated, 
binding nature of the WTO Agreement and its Annexes.21  Indeed, the Appellate Body found further:  
"[i]t is important to understand that the WTO Agreement is one treaty.  …  [I]ntegral parts of that 
treaty … are equally binding on all Members pursuant to Article II:2 of the WTO Agreement"22 
(emphasis in original) .   
 
Thus, in Australia's view, the issue of whether th e TRIPS Agreement – or any particular provision of 
that Agreement – is lex specialis  is not determinative unless and until there is shown to be a clear 
conflict between the TRIPS Agreement and anothe r covered agreement, or between a specific 
provision of the TRIPS Agreement and a specifi c provision of another covered agreement.   
 
                                                      
21 Korea – Definitive Safeguard Measure on Imports of Certain Dairy Products , Report of the 
Appellate Body, WT/DS98/AB/R, paragraph 74.   
22 Korea – Dairy Safeguard , Report of the Appellate Body, paragraph 75.    WT/DS290/R/Add.1 
 Page A-101 
 
 
 Further, Australia does not believe there to be any conflict between TRI PS Article 23.3 on the one 
hand, and GATT and/or TBT national treatment provi sions on the other hand.  Australia does not see 
that a requirement to determine the practical  conditions under which homonymous GIs will be 
differentiated from each other would necessarily involve a breach of a WTO Member's obligations.  Indeed, the final clause of TRIPS Article 23.3 expr essly refers to "the need to ensure equitable 
treatment of the producers concerned and that consumer s are not misled".  In Australia's view, had the 
negotiators of the TRIPS Agreement intended that TR IPS Article 23.3 – or any other provision of the 
TRIPS Agreement – excuse compliance with a WTO Member's national treatment or MFN obligations under the GATT and/or TBT Ag reement, they would have said so.   
 56. 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 c onditions in Article 12(1)?   USA  
 
57. Does the EC consider that it may apply e quivalence 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  
 
58. 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 requirements 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  
 Australia's claim is that the absolute requirement
 for an EC model inspection structure as a condition 
for the registration of an EC-defined GI – irresp ective of the circumstances in the WTO Member in 
which the geographical area is located or of the circ umstances of trade of a product bearing the name 
proposed to be registered – is inconsistent with the EC's obligations pursuant to TBT Article 2.2.  
Australia does not claim either that requiring some form of verification process that takes into account 
the particular circumstances of the WTO Member of  origin of the agricultural product or foodstuff as 
a condition for the registration of an EC-defined GI  is necessarily inconsistent with the EC's WTO 
obligations per se , or that there are any specific aspects of the required inspection structures that make 
it inconsistent with EC's WTO obligations.    
59. Under what circumstances would the Commi ssion 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 
 
60. Australia argues that the EC's inspection st ructures requirements are a technical regulation 
under the TBT Agreement (paragraphs 209-224 of its fi rst written submission).  Is there a dividing 
line under the TBT Agreement between a technica l regulation and a conformity assessment 
procedure?  If so, where does it lie?   AUS, EC  
 
It is Australia's claim that the absolute requi rement for an EC model inspection structure as a 
condition for the registration of an EC-defined GI is a technical regulation.  To the extent that 
Articles 4, in particular Article 4.2(g), and 10 of Regulation No. 2081/92 read together:    
(i) apply to an identifiable product or group of products;   
(ii) lay down a process related to product characteristics;   WT/DS290/R/Add.1 
Page A-102  
 
 (iii) compliance with which is mandatory;   
the EC measure is a technical regulation with in the meaning of the TBT Agreement.   
 The dividing line between a technical regulation and a conformity assessment procedure is difficult to determine in the abstract.  Australia notes, however, that it is the express and fundamental premise of 
TBT Articles 5-9 that the purpose of a conformity assessment procedure within the meaning of those 
provisions is to provide a positive assurance of conformity with a t echnical regulation or standard.  
Wherever the dividing line may lie – and Australia  does not take a position on whether a technical 
regulation or standard and a conformity assessment  procedure are necessarily mutually exclusive – a 
conformity assessment procedure requires at the very least a separate technical regulation or standard 
against which products are to be assessed.  Does  the EC contend that the product specification 
requirement set out in Article 4 of Regulation No . 2081/92 constitutes a technical regulation?   
 
61. 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  
 
See response to question 60 above.    
62. With respect to paragraph 259 of Australia's first written submission, can Australia provide 
examples of alternatives to the EC's inspection st ructures which would be less trade restrictive and 
achieve the same objective?   AUS  
 As noted in response to questions 58 and 60 above , it is Australia's cl aim that the absolute 
requirement for an EC model "one size fits all" inspection structure as a condition for the registration 
of an EC-defined GI is a technical regulation that is  inconsistent with the EC's obligations pursuant to 
TBT Article 2.2.    Having regard to the particular production circumst ances of an agricultural product or foodstuff, an 
inspection structure that fails to meet the require ments of Article 10 of Regulation No. 2081/92 – for 
example, one that engages staff as required rather  than having qualified staff "permanently at [its] 
disposal" – could fulfil the objective of ensuring compliance with a product specification.  In other circumstances, it may be that an inspection st ructure might not be necessary at all because of 
limitations – for example, geographical combined with a very small number of producers – on the 
production capacity of products from the territory of  a WTO Member.  In such  circumstances, other 
means of ensuring compliance with the product sp ecification, such as causes of action under the 
relevant WTO Member's law, may be sufficient to  fulfil the legitimate objective being pursued.  It 
may be that problems concerning the use of an EC -defined GI from a WTO Member arise in respect 
of products originating in a third WTO Member :  a prescriptive EC model inspection requirement 
would not be of any benefit in such circumstances.    
Otherwise, a WTO Member might have in place a system of laws providing a general prohibition on 
misleading and deceptive commercial practices:  su ch laws and their accompanying enforcement 
mechanisms can cover misleading and deceptive pr actices, unfair competition consequences of 
misleading or deceptive use of GIs, and/or the prevention of abuse of the rights of IP rights-holders.  The common law tort of passing off is another way by  which the prevention of misuse of IP rights can 
be addressed.  Industry certification and self-regulation by producers are further possibilities, as are 
food safety/labelling laws.  Alone or in combinati on, these systems are alternatives that could – in 
some circumstances – provide the same effective level of assurance of compliance with a product 
specification as the EC model inspection structure.     WT/DS290/R/Add.1 
 Page A-103 
 
 
 Moreover, where these alternatives exist in anothe r WTO Member, the requirement of the EC model 
inspection structure would constitute a requirement for a duplication of those existing mechanisms.  
As such, the EC requirement is more trade restrictive than necessary.    
63. What does Article 14(2) of Regulation (EC) No. 2081/92 mean wh ere 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 used in accordance with its GI registration?   EC 
 
64. 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 shall not prejudice "the right to use a trademark"?  EC 
 
65. Does the scope of Article 14(2) of Regula tion (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 
 
66. Has Article 14(2) of Regulation (EC) No. 20 81/92 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 
 
67. 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 
 
68. 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 Ar ticles 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 
 
69. 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 su ch a way as to render 
Article 14(2) inapplicable?   EC 
 
70. Do the EC member States agree with the Co mmission'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
 
 
71. Has a judicial authority ever ruled on the int erpretation 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 
 
72. 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 WT/DS290/R/Add.1 
Page A-104  
 
 GIs and prior trademarks.  Would this mean that th e TRIPS Agreement, in particular Article 24.5, 
allows for some degree of flexibility for indivi dual WTO Members to implement their obligations?   
USA, AUS  
 
The TRIPS Agreement does provide some degree of flexibility for individual WTO Members to 
implement their obligations.  TRIPS Article 1.1 e xpressly provides that "Members shall be free to 
determine the appropriate method of  implementing the provisions of th is Agreement within their own 
legal system and practice".  Consistent with that te net, the heading of Part II of the TRIPS Agreement 
expressly refers to "Standards
 concerning the availability, scope and use of intellectual property 
rights".   
 
On the other hand, TRIPS Article 24.5 – read in co ntext together with TRIPS Articles 16.1 and 1.1 – 
does not provide for any flexibility in relation to pre-existing trademark rights to prevent confusing 
use.  Indeed, the express purpose of TRIPS Article 24.5 is to protect such pre-existing rights.   
 73. Please supply a copy of the wine regulations  referred to in paragraph 16 of the EC oral 
statement.   EC  
 
74. Which particular GIs did the EC protect 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 
 
75. Which party bears the burden of proof in relation to: 
 
(a) Article 24.5 of the TRIPS Agreement?  In par ticular, 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? 
(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  
In accordance with the Appellate Body's findings in US – Woven Shirts and Blouses
23 and as 
consistently applied in WTO dispute settlement since:    
 (a) a complaining party bears the burden of  proof where a complaining party alleges a 
breach of obligations pursuant to TRIPS Ar ticle 24.5 – otherwise, a responding party 
which relies on that provision to excuse or ot herwise justify a measure's inconsistency 
with another provision bears the burden of proof;   
 
 – TRIPS Article 24.5 does not alter the scope of TRIPS Article 16.1.  Rather, 
TRIPS Article 24.5 confirms the conti nued applicability of the rights granted 
by TRIPS Article 16.1 in the circumstan ces covered by TRIPS Article 24.5.   
 and     (b) a responding party bears the burden of pr oof in relation to TRIPS Article 17.   
 
 – In Australia's view, and having regard  to previous dispute settlement findings 
relating to analogous TRIPS provisions concerning patents
24 and copyright25, 
                                                      
23 United States – Measure Affecting Imports of Woven Wool Shirts and Blouses from India , Report of 
the Appellate Body, WT/DS33/AB/R, page 14.   
24 Canada – Patent Protection of Pharmaceutical Products , Report of the Panel, WT/DS114/R.   
25 United States – Section 110(5) of the US Copyright Act , Report of the Panel, WT/DS160/R.    WT/DS290/R/Add.1 
 Page A-105 
 
 
 TRIPS Article 17 only permits a WTO Member to provide for limited 
exceptions to the rights conferred by a trademark.   
 
76. Article 24.5 of the TRIPS Agreement uses th e 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  
 
Relevant context for the interpretation of TRIPS Ar ticle 24.5 is provided particularly by the design 
and architecture of the TRIPS Agreement.  TRIPS Artic le 24.5 is placed in Section 3, Part II, of the 
TRIPS Agreement, which is concerned with the "G eographical Indications" category of intellectual 
property rights.  Moreover, TRIPS Article 24 is head ed "International Negotiations:  Exceptions".  In 
Australia's view, in the absence of an express provisi on to the contrary, the exceptions set out in that 
Article can only be exceptions to the provisions of Section 3, Part II, on Geographical Indications.   
 
Having regard to the ordinary meaning of the word s in context and in light of the object and purpose 
of the TRIPS Agreement, to the provisions of Se ction 2, Part II, of the Agreement concerning 
Trademarks, and to the standards relating to the av ailability, scope and use of intellectual property 
rights set out in that Part, in Australia's view:    
• the validity of the registration of a tradem ark refers to the ongoing legality of the 
good faith registration of a trademark.   
   Thus, measures adopted to implement Sec tion 3, Part II, of the TRIPS Agreement 
cannot prejudice, that is, affect adversely,  such trademark registrations on the basis 
that the trademark is identical with, or sim ilar to, a GI.  In Australia's view, the legal 
bundle of rights contained in a validly re gistered trademark in cludes the exclusive 
right to prevent confusing use granted by TR IPS Article 16.1.  As such, the obligation 
that a WTO Member "shall not prejudice … the validity of the registration of a trademark" includes an obligation on a WTO Member not to act so as to undermine the exclusive right to prevent confusing use granted by TRIPS Article 16.1;   
 
and  
• the right to use a trademark refers to the ongoing ability to use a trademark where 
rights to a trademark have been acquired through use in good faith.   
   Thus, measures adopted to implement Sec tion 3, Part II, of the TRIPS Agreement 
cannot prejudice, that is, affect adversely,  such rights to use a trademark on the basis 
that the trademark is identical with, or similar to, a GI.   
 
77. Article 24.5 of the TRIPS Agreement uses the phr ase "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  
 
As stated in response to question 76 above, Austra lia considers that the phrase "not prejudice … the 
right to use a trademark" applies to trademarks acquired through use.    However, on any interpretation, the obligation to " not prejudice … the validity of the registration of a 
trademark" clearly applies to registered trademarks , and therefore the obligation to provide the rights 
set out in TRIPS Article 16.1 remains applicable.  The "exclusive right [to prevent  confusing use] " or 
"rights under Article 16.1" are therefore already captured by the phrase "not prejudice … the validity WT/DS290/R/Add.1 
Page A-106  
 
 of the registration of a trademark".  Whatever may have been the intention in including the phrase 
"right to use", it was clearly separate from, and in addition to, the exclusive right to prevent confusing 
use required to be granted in respect of regi stered trademarks under TRIPS Article 16.1.   
 
78. 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  
 
In Australia's view, the customary principles of in terpretation of public inte rnational law considered 
together with the design and architecture of the TRIPS Agreement would not support the view that 
obligations and exceptions in relation to any give n category of intellectual property right covered by 
Part II of the TRIPS Agreement would appear in an y Section other than the one dealing with that 
category of intellectual property right without an express, unequivocal statement to the contrary.  Accordingly, an obligation and related exception woul d not appear in different Sections without an 
express, unequivocal statement to that effect.    
79. 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  
 
Australia does not consider that TRIPS Article 16.1 a nd 22.3 are in conflict.  For example, Australian 
trademark law expressly provides, at section 61, that the registration of a trademark may be opposed on the basis that the proposed trademark contains or consists of a false GI.   
 
In rare circumstances and having regard to the princi ple of territoriality, it is possible that a registered 
trademark could become misleading over time.  Fo r example, because of advances in communication, 
the relevant public within the territory of a WTO Member may come to be aware that a term included 
in a trademark is in fact a TRIPS-defined GI for a product from elsewhere and thus be misled as to the 
true place of origin.  TRIPS Article 22.3 recognises the possibility of such a situation and provides a 
means to resolve such a conflict.   
 
80. Are any exceptions permitted to exclusive tr ademark 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  
 
Subsections 44(3) and (4) provide for concurrent tr ademark registration in cases of honest concurrent 
use, and prior and continuous use.    Section 122 of the Australian Trade Marks Act pr ovides a number of exceptions from the rights 
granted to trademark right holder.  These exceptions include:   
 
• the good faith use of a person's name or place of business, or the good faith use of the 
name or place of business of a predecessor in business;   
 
• the good faith use of a sign to indicate kind, quality, quantity, intended purpose, 
value, geographical origin, or some other characteristic, of goods or services, or the time of production of goods or of the rendering of services;   
 
• use for the purposes of comparative advertising;    WT/DS290/R/Add.1 
 Page A-107 
 
 
  
• exercising a right to use a trademark given to the person under the Act;  and  
 
• where a court is of the opinion that registration would be obtained if applied for.  
(This opinion would be based on evidence of use.)   
 
However, the exception for use of a sign to indi cate geographical origin does not create an exception 
for a TRIPS-defined GI.  In fact, section 6 of the Australian Trade Marks Act expressly defines a GI in terms closely mirroring TRIPS Article 22.1.  Moreover, where the Act refers to a GI as an intellectual property right, it does so explicitly.  Thus, for example, section 61 of the Act expressly 
provides for the rejection of an application for registra tion of a trademark that c ontains or consists of a 
false GI.   
 
81. Please cite any authority for the proposition 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  
 
Australia has not contended – and does not conte nd – that a WTO Member must comply with a 
particular WTO obligation through a single measur e applicable throughout its territory.  Rather, 
Australia contends that, while the EC can choose
 to offer more extensive protection of EC-defined 
GIs at the Community level, the EC must also ensu re that it does not breach its TRIPS obligations in 
doing so.  Given the EC legal system, and the term s of Regulation No. 2081/92 and of other EC and 
EC Member State law, the EC has effectively implemented a TRIPS right – at Community level – 
without also effectively implementing at the sa me level the concurrent TRIPS obligations.   
 
82. If the Panel were to uphold the complainants' 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 po sitive solution to this dispute?   USA, AUS  
 
Other than in respect of TRIPS Article 1.1, Aust ralia's claims concerning the registration of EC-
defined GIs pursuant to Regulation No. 2081/92 generally  address specific, separate aspects of the EC 
measure:   
• in relation to TRIPS Article 16.1, it is Australia's claim that the EC measure does not 
grant to the owner of a registered trademark the rights required to be granted by that 
provision:  thus, the claim concerns registered trademarks;   
 
• Australia's claim in relation to TRIPS Artic le 24.5 is that the EC measure prejudices 
the eligibility of an application for registration of a trademark by denying a right of priority required to be granted by Paris Article 4:  thus, the claim concerns an 
application for registration of a trademark;   
 
• the situations covered by TRIPS Article  22.2 do not necessarily involve trademark 
rights:  for example, a term may have become a generic product description in international trade before it was protected in its country of origin;   
 
• Australia's claims in relation to TRIPS Ar ticles 41.1, 41.2, 41.3 and 42 concern the 
EC's obligations to ensure the availability  of procedures for the enforcement of an 
intellectual property right under EC law so as to permit effective action against an infringement;  and  
 WT/DS290/R/Add.1 
Page A-108  
 
 • Paris Article 10 bis.1 deals with the issue of unfair competition, which is not 
otherwise dealt with in the TRIPS Agreement except "in respect of geographical indications" in TRIPS Article 22.2.  A WTO Member's obligation to comply with Paris Article 10 bis.1 includes the obligation to protect trademarks against unfair 
competition from a GI.  The obligation in Paris Article 10 ter.1 therefore ensures that 
a country of the Union/WTO Member actuall y provides the mechanisms necessary to 
assure protection against unfair competition in any guise.   
 Australia's claim under TRIPS Article 1.1 does not, of  course, address a separate aspect of the EC 
measure.  It does, however, seek confirmation that a WTO Member is obliged to give effect to the 
provisions of the TRIPS Agreement before it is ab le to offer more extensive protection for one 
particular category of intellectual property right.   
 
83. 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  
 
Yes.  Please see answer to question 82 above.    
84. Are the procedures raised in the United St ates' 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  
 
85. Are the procedures raised 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  
 
In the event that the Panel should consider that the decision-making process provided by Article 15 of 
Regulation 2081/92 does provide a means for the owner of a registered trademark to enforce rights required to be granted by TRIPS Article 16.1, it is  Australia's view that the decision-making process 
constitutes an enforcement process in respect of su ch trademark rights governed by Part III of the 
TRIPS Agreement:  Part IV of that Agreement is not applicable.   
 
86. 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  
 
Yes.   
 
87. What is the significance of the EC's st atement that the complainants' claims are 
"theoretical"?  Does the EC suggest that this affects the Panel's mandate or function in any way?   EC 
 
88. Please clarify the form of the recommendations  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  
 
In relevant part:    
• DSU Article 3.7 provides:  "[t]he aim of  the dispute settlement mechanism is to 
secure a positive solution to a dispute";   
  WT/DS290/R/Add.1 
 Page A-109 
 
 
 • DSU Article 11 provides:  "[t]he functi on of panels is to assist the DSB in 
discharging its responsibilities under this U nderstanding and the c overed agreements.  
Accordingly, a panel should make … an objective assessment of the facts of the case and the applicability of and conformity with  the relevant covered agreements …";   
 
• DSU Article 12.7 provides:  "… the report of a panel shall set out the findings of fact, 
the applicability of relevant provisions a nd the basic rationale behind any findings 
and recommendations that it makes";  and  
 
• DSU Article 19.1 provides:  "[w]here a pane l or the Appellate Body concludes that a 
measure is inconsistent w ith a covered agreement, it shall recommend that the 
Member concerned
[…] bring the measure into conformity with that agreement[…]".   
 
The measure at issue in this dispute includes  the registrations – and protection in perpetuity – of more 
than 600 EC-defined GIs pursuant to processes that were inconsistent with the EC's obligations 
pursuant to the TRIPS Agreement and the GATT 1994.   Australia seeks rulings and recommendations 
from the Panel in respect of earlier versions of Regulation No. 2081/92 to the degree necessary to 
establish the extent to which the EC's actions in re gistering those EC-defined GIs were inconsistent 
with the EC's obligations under the covered agre ements, and therefore the extent to which the 
protection afforded those registrations continues in pe rpetuity the EC's violation of its obligations.   
 
89. Is there a notion of estoppel in WTO di spute settlement which applies where a Member 
refrains from raising claims in relation to a measure until after it is amended?   EC 
 
90. 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 th e TRIPS Agreement applies to these measures.   AUS  
 
The first registrations of EC-defined GIs under Re gulation 2081/92 did not occur until the adoption of 
Regulation No. 1107/96 of 12 June 1996.26  Thus TRIPS Article 70 has no applicable to these 
measures.    
91. 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  
 
Please see response to question 88 above.    Australia seeks rulings and recommendations from th e Panel to the degree necessary to establish the 
extent to which the EC's actions in registering – a nd thus providing ongoing protection to – more than 
600 EC-defined GIs were inconsistent with EC's ob ligations under the covered agreements at the time 
at which those EC-defined GIs were registered, t hus enabling those continuing registrations to be 
brought into conformity with the EC's ob ligations under the covered agreements.   
 
92. Does Australia seek relief in respect of existing 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  
                                                     
 
26 Exhibit COMP-3.a.   WT/DS290/R/Add.1 
Page A-110  
 
  
Please see responses to questions 88 and 91 above.    Approximately 480 EC-defined GIs were registered under the process provided by the now repealed Article 17 of Regulation No. 2081/92.  Australia unde rstands the number of registrations pursuant to 
Article 6 of Regulation No. 2081/92 now  stands at approximately 160.   
 Australia seeks "relief" in respect of existing regi strations of more than 600 EC-defined GIs for which 
the EC did not:    
• grant to the owners of registered tradem arks the rights required to be granted by 
TRIPS Article 16.1;   
 
• provide to interested parties the legal m eans to prevent misleading use or use which 
constitutes an act of unfair competition within the meaning of Paris Article 10bis as required by TRIPS Article 22.2;   
 
• grant the enforcement procedures required to  be made available under TRIPS Articles 
41.1, 41.2, 41.3 and 42;  or  
 
• observe its national treatment obligations pur suant to TRIPS Article 3.1, Paris Article 
2 and GATT Article III:4.   
 Australia is not aware of a similar factual situation arising in another dispute.  That said, Australia 
does not believe that what it is seeking is unusual.  Once the Panel has determined which aspects of 
the EC measure are WTO inconsistent, it is open to  the EC to determine the action necessary to bring 
its measure into conformity.  It may be possibl e for the EC to do this by providing to persons 
adversely affected by the registrations access to a civil judicial proceeding vested – in respect of 
registrations of EC-defined GIs pursuant to Regul ation No. 2081/92 – with the authority required to 
be made available by Part III of the TRIPS Agreem ent or with the authority to hear and determine 
claims pursuant to TRIPS Article 22.2.  Alternativ ely, it may be possible for the EC to bring some 
registrations into conformity through the provisi on of just compensation for any trademark rights 
unable to be otherwise remedied.  Ultimately, it ma y be that a few registrations of EC-defined GIs 
might have to be revoked, although Australia notes that  such action is normally prospective in effect.   
 
93. Does Australia seek relief in respect of indivi dual 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  
 
Australia seeks relief in respect of the continui ng protection of individual EC-defined GIs whose 
registrations were made inconsis tently with the EC's obligati ons under the cove red agreements, 
including because of the EC's failure to grant to  the owner of a registered trademark the rights 
required to be granted by TRIPS Article 16.1.    Australia is not able to say which individual regist rations may have constituted a denial of rights to 
trademark right holders – which are expressly recognised by the TRIPS Agreement as private rights – 
or to another party with a legitimate interest unde r any of the cited provisions.  With due respect, 
however, nor can the EC legitimately say that its actions have not resulted in a denial of rights 
required to have been granted or  made available under the TRIPS Ag reement, as it has never provided 
the means to enable such issues to be tested.   
  WT/DS290/R/Add.1 
 Page A-111 
 
 
 It may be possible, therefore, having regard to th e answer to question 92 above, to "implement" any 
adverse findings by the Panel via the provision of such means.  This may lead to few, or to many, of the individual registrations being contested.    WT/DS290/R/Add.1 
Page A-112  
 
 QUESTIONS POSED BY THE EUROPEAN COMMUNITIES 
TO THE COMPLAINING PARTIES 
 
 
1. Australia:   Could you please give details of any case where the authorities of the Member 
States have declared inadmissible an objection for the reasons alleged under Claim 21 (Australia's 
FWS, paras. 88-92)  
Australia has not claimed that an EC Member State has declared inadmissible an objection made to it.  
Whether an individual EC Member State has declared  an objection to be inadmissible in a particular 
case is irrelevant.   
 Rather, Australia has claimed that Regulation No. 2081/92 as such does not ensure
 the admissibility 
of a statement of objection from the owner of a registered trademark on the grounds that a proposed EC-defined GI would constitute use of an identical or similar sign for identical or similar goods that 
would result in a likelihood of confusion.
27  As the Court of First Instance said in the Canard 
Judgment:  "[n]o provision in Article 7 of Regula tion 2081/92 authorises the Commission to consider 
an objection notified to it by anyone other than a Member State".28  As the Court has confirmed that 
the Regulation does not ensure that a statement of  objection from any person – let alone a trademark 
right holder – is admissible, the Regulation as such denies to the owner of a registered trademark the 
exclusive right to prevent unauthorised confusing u se in relation to an EC-defined GIs registered 
under the Regulation, contrary to the EC's obligation to grant such a right pursuant to TRIPS 
Article 16.1.    
2. Australia:   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).    
Australia has not claimed that the EC has refused an application in the circumstances covered by 
Australia's claim that the EC measure is inconsis tent with the EC's obligations pursuant to TRIPS 
Article 24.5.  Rather, Australia claims that Re gulation No. 2081/92 as such does not provide – and 
never has provided – the right of priority required to  be granted pursuant to Paris Article 4 in relation 
to the registration of an EC-defined GI under the Regulation.   
 
3. United States:   The EC understands that the regulations of the US Alcohol and Tobacco Tax 
and Trade Board, and more specifically Section 27 CFR 4.39(i), provide for the co-existence of 
geographical indications for wi ne and some earlier tradema rks, 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? 
 
4. Australia:   The EC understands that Australia's Wine and Brandy Corporation Act 1980 (the 
"WBC Act") prohibits the use of a registered geographical indication for wine which does not 
originate in the area covered by the geographical indication. The EC further understands that no 
exception to this prohibition is provid ed with respect to prior trademarks. 
 (a) Is this understanding correct? 
 
                                                     
 
27 First Written Submission of Australia, paragraph 92.   
28 The Canard Judgment, Exhibit COMP-12, paragraph 45.    WT/DS290/R/Add.1 
 Page A-113 
 
 
  (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? 
 
The WBC Act provides that it is an offence to sell, export or import wine with a false or misleading 
description and presentation.  The description and presentation of a wine is false if, inter alia , it 
includes the name of a registered GI and the wine di d not originate in the country, region or locality in 
relation to which the GI is registered.  All GIs th at are protected under the WBC Act notwithstanding 
prior trademark rights are protected with the consent of the owners of those trademarks
.  Consent by a 
trademark owner not to use a trademark in the course of  trade is a very different issue to the denial by 
a WTO Member of rights required to be grante d to trademark owners pursuant to the TRIPS 
Agreement.    
5. Australia:   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 indication 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? 
 Yes.   
 
 (b) What is the legal basis for this policy? Has the GIC the authority to derogate from 
the WBC Act? 
 Under Regulation 25 of the WBC Act, when determining a GI, the Committee is not prohibited from 
having regard to any other relevant matters.  Re levant matters include the existence of a prior 
trademark using a name which is the same as or si milar to the proposed GI as well as the trademark 
owner's consent to the determination of the GI as proposed.   
 
 (c) Does this policy apply also with th e respect to the registration of foreign 
geographical indications? 
 
Foreign GIs other than those registered pursuant to a bilateral agreement (such as the Agreement 
between Australia and the European Community on Trade in Wine) are determined by the Australian 
Wine and Brandy Corporation under subsection 8(2) (ad) of the WBC Act.  The Australian Wine and 
Brandy Corporation is developing administrative pr ocedures for the determination of such foreign 
GIs.  Nonetheless, the provisions of the WBC Act allow for the inclusion in such procedures of a 
policy similar to that applied by the GIC regarding the existence of prior trademark rights in relation to a name which is the same as or similar to a proposed foreign GI.    Once registered, all GIs – whethe r Australian or foreign – are given equal protection under the WBC 
Act.   
 
 (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? 
 AND
 
 
 (e) If so, how does Australia reconcile this policy with the terms of Article 24.5 of the 
TRIPS Agreement?  WT/DS290/R/Add.1 
Page A-114  
 
 An application for registration of a GI under the W BC Act is considered on its merits, having regard 
to the principle of territoriality.    
6. Australia:    
 
 (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?  
 
The registration and opposition procedures before the Tr ade Mark Office of IP Australia are part of a 
broader system whereby trademark right holders can  enforce their rights as granted by section 20 of 
the Australian Trade Marks Act.  To the extent th at the registration and opposition procedures before 
the Trade Mark Office provide a means for a trad emark right holder to enforce his/her trademark 
rights, those procedures may be characterised as "e nforcement procedures" within the meaning of 
Part III of the TRIPS Agreement.  Further, all decisions concerning registration and opposition in 
relation to a trademark application are reviewable de novo  in the Federal Court of Australia.   
  (b) Is Australia's Trade Mark Office a "judicial body"? 
 
No.   
 
 (c) Are the registration and opposition pro cedures before Australia's Trade Mark Office 
"judicial procedures" within the meaning of Article 42 of the TRIPS Agreement? 
 
Australia does not consider the registration and opposition procedures before the Trade Mark Office 
of IP Australia to be "judicial procedures" within  the meaning of TRIPS Article 42.  However, all 
decisions concerning registration and opposition in re lation to a trademark application are reviewable 
de novo  in the Federal Court of Australia, which are j udicial procedures within the meaning of TRIPS 
Article 42.   
 
 (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?  
 The Federal Court of Australia ha s the authority to order remedies within the meaning of TRIPS 
Articles 44-46.    
7. United States:    
 
 (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?  
 
8. Australia and the United States:    
  WT/DS290/R/Add.1 
 Page A-115 
 
 
  (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? 
 
A decision to register a trademark is reviewable de novo  by the Federal Court of Australia.  Thus, it 
would be possible for an EC national who owns an Australian trademark to claim before that court 
that another trademark has been registered by the Trade Marks Office of IP Australia in violation of 
the exclusive rights to use a trade mark and to auth orise other persons to use that trademark granted 
by section 20 of the Australian Trade Marks Act, wh ich implements Australia's obligations pursuant 
to TRIPS Article 16.1,
29 even where it is not contested that the later registration is in conformity with 
all the relevant provisions of the Act.   
 
 (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 "judicial civil procedures" in order to 
"enforce" Article 16.1?   
 
Not applicable.    9. Australia:   The WBC Act set up a register of geographical indications.  While the WBC Act 
lays down the conditions and procedures for the regis tration 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 WBC Act?  
Yes.  Foreign GIs can be determined and register ed under the WBC Act pursuant to subsections 8(2) 
and 40ZD(2) respectively.   
 
 (b) If so, what are the relevant conditions and procedures for the registration of foreign 
geographical indications? 
 
Pursuant to the provisions of subsection 8(2)(ad) of  the WBC Act, applications for the registration of 
foreign GIs (other than those registered pursuant to a bilateral agreement with Australia) can be 
received from either individuals or foreign countries.   Administrative procedures for the determination 
of such foreign GIs are currently being developed by  the Australian Wine and Brandy Corporation.   
 Foreign GIs protected under bilateral agreements with Australia are registered under subsection 
40ZD(2) of the WBC Act in accordance with th e provisions of the bilateral agreement.   
 
 (c) Has any foreign geographical indicatio n been registered under the WBC Act, other 
than those registered pursuant to a bilateral agreement? 
 
No foreign GIs have been registered under the W BC Act other than those registered pursuant to a 
bilateral agreement.  Nor have any applicati ons to register such GIs been received.   
 10. Australia and the United States:   Have Australia and the Un ited States ever been requested 
to transmit an application for the registrati on, under Regulation 2081/92, of a geographical 
indication relating to an area located in thei r territory?  If yes, what action have they taken? 
                                                     
 
29 The provisions of international agreement do not have direct effect in Australian law.   WT/DS290/R/Add.1 
Page A-116  
 
 To the best of Australia's knowledge, it  has not been requested to "transmit"
30 such an application.  
Stakeholders would be aware that Regulation No . 2081/92 requires reciprocal and equivalent 
treatment of EC-defined GIs for corresponding agricu ltural products or foodstuffs, which Australia is 
not obliged to provide.    11. Australia and the United States:   Have Australia and the Un ited States ever been requested 
to transmit a statement of objection to the registr ation, under Regulation 2081/92, of a geographical 
indication?  If yes, what action have they taken? 
 
To the best of Australia's knowledge, it  has not been requested to "transmit"
 31 such a statement of 
objection.  As Australia noted before the Panel,  Australia has not established any mechanism for 
identifying and/or receiving such information.  Au stralia – consistent with the express preambular 
provision to the TRIPS Agreement – recognises intellectual property rights as private rights:  in the absence of express commitments voluntarily entered in to by Australia at international level which 
could require it to "transmit" such a statement of objection, Australia has not had any reason to 
systematically assemble such information.   
 With the growing list of agricultural products an d foodstuffs for which registration – and thus 
protection – of EC-defined GIs is available unde r Regulation No. 2081/92, an increased number of 
stakeholders want to ensure that they can safegua rd their intellectual property rights within the EC 
both now and into the future.  This may in the fu ture include seeking that the Australian Government 
"transmit" an objection on their behalf.   
 
12. United States:   How many US geographical indications for products falling under the scope 
of Regulation 2081/92 are protected in the United States? 
 
13. Australia:   How many Australian geographical in dications for products falling under the 
scope of Regulation 2081/92 are protected in Australia? 
 
Australia does not have a system for the registration of GIs as a separate category of intellectual property right other than for wines.  Protection of  TRIPS-defined GIs for other products is provided 
through a number of means.   
 
However, Australia is a large agricultural producer  with many high quality production regions.  Given 
the growing list of agricultural products and foodstu ffs for which registration – and thus protection – 
may be sought under Regulation No. 2081/92, Australia  believes that there are a significant number of 
Australian terms that producers could seek to have  registered – and thus protected – under the 
Regulation for the purposes of export into the EC.   
 
                                                     
 
30 It is unclear to Australia whether the EC is using the word "transmit" in the sense of Article 12a.2 of 
Regulation No. 2081/92, or simply in the sense of acting as a postbox to onforward an application.   
31 Again, it is unclear to Australia whether the EC is using the word "transmit" in the sense of 
Article 12d.1 of Regulation No. 2081/92, or simply in the sense of acting as a postbox to onforward an 
objection.