Document: WT/DS290/R/Add.3 Page D-1 ANNEX D MISCELLANEOUS Contents Page Annex D-1 Request for the Establis hment of a Panel by Australia D-2 Annex D-2 Letter dated 9 July 2004 from th e Panel to the International Bureau of
Date: 9 July 2004
Document codes: WT/DS290/R/Add.3
Complainant: Australia
Respondent: EU
Third parties: Argentina, Brazil, Canada, China, Taiwan, Colombia, Guatemala, India, Mexico, New Zealand, Turkey, U.S.
Dispute stage: Panel
Agreements cited: Art. 1, 2, 10, 16, 20, 24.5, 41, 42, 3, 4, 22.2, 63.1, 63.3, 65.1  Intellectual Property (TRIPS)Art. I:1, III:4  GATT 1994Art. 2.1, 2.2, Annex 1  Technical Barriers to Trade (TBT)Art. XVI:4  Agreement Establishing the World Trade Organization

ANNEX D

MISCELLANEOUS

Contents Page
Annex D-1 Request for the Establis hment of a Panel by Australia

D-2
Annex D-2 Letter dated 9 July 2004 from th e Panel to the International Bureau of
WIPO

D-4
Annex D-3 Reply from the International Bu reau of WIPO to the Panel's Letter
dated 9 July 2004, received by the Panel and the WTO Secretariat on

D-5

EUROPEAN COMMUNITIES – PROTECTION OF TRADEMARKS
AND GEOGRAPHICAL INDICATIONS FOR AGRICULTURAL
PRODUCTS AND FOODSTUFFS

Request for the Establishment of a Panel by Australia

 The following communication, dated 18 August 2003, from the Permanent Mission of
Australia to the Chairman of the Dispute Settlement Body, is circulated pursuant to Article 6.2 of the
DSU.

 My authorities have instructed me to request the establishment of a panel on behalf of
Australia.

 On 17 April 2003, Australia requested consu ltations with the European Communities (EC)
pursuant to Article 4 of the Understanding on Rules and Procedures Governing the Settlement of
Disputes (DSU), Article XXII of the General Agreement on Tariffs and Trade 1994 (GATT 1994),
Article 64 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS
Agreement) and Article 14 of the Agreement on Technical Barriers to Trade (TBT Agreement)
concerning the protection of trademarks and th e registration and protection of geographical
indications for foodstuffs and agricultural products in the EC. The request was circulated to Members
on 23 April 2003 in document Cons ultations were held on 27 May 2003 but did not
lead to a resolution of the dispute.

 Consequently, Australia requests that a panel be established pursuant to Articles 4.7 and 6 of
the DSU, Article XXIII:2 of GATT 1994, Article 64 of the TRIPS Agreement and Article 14 of the
TBT Agreement.

 The measure at issue is Council Regulation (EEC) No. 2081/92 of 14 July 1992 on the
protection of geographical indications and designati ons of origin for agricultural products and
foodstuffs, any amendments thereto (including Council Regulation (EC) No. 692/2003 of 8 April
2003, published in the Official Journal of the European Union No. L99 of 17 April 2003), and related
implementing and enforcement measures ("the EC measure"). The EC measure lays down and
implements rules on the protection of designations of origin and geographical indications for
agricultural products and foodstuffs, excluding wines and spirits.

 Australia is of the view that the EC measure:

• diminishes the legal protection for tradem arks under the TRIPS Agreement, contrary
to Articles 1, 2 (incorporating by reference Articles 6quinques(B), 10, 10bis and 10ter
of the Paris Convention (1967)), 16, 20, 24.5, 41 and/or 42 of the TRIPS Agreement;

• does not accord immediately and unconditionall y to the nationals and/or products of
each WTO Member any advantage, favour privilege or immunity granted to the
nationals of any other WTO Member, cont rary to Articles 1 and 4 of the TRIPS
Agreement and/or Article I:1 of GATT 1994;

• does not accord to nationals and/or products of each WTO Member treatment no less
favourable than that it accords to its own nationals and/or like products of national
origin, contrary to Articles 1, 2 (incorpor ating by reference Article 2 of the Paris
Convention (1967)) and 3.1 of the TRIPS Agreement and/or Article III:4 of
GATT 1994;

• does not provide the legal means for interest ed parties to prevent misleading use of a
geographical indication and/or to prevent any use of a geographical indication which
constitutes an act of unfair competition within the meaning of Article 10bis of the
Paris Convention (1967), contrary to Articles 1 and 22.2 of the TRIPS Agreement;

• is not applied in a transparent manner, contrary to Articles 1, and 63.1 and 63.3 of the
TRIPS Agreement;

• is a technical regulation within the meani ng of Annex 1 to the TBT Agreement, does
not accord to products imported from the territory of any WTO Member treatment no
less favourable than that accorded to like products of national origin and/or to like
products originating in any other country, and/or has been prepared, adopted and/or
applied with the effect of creating unnecessary obstacles to trade, being more trade-
restrictive than necessary to fulfil a legitimate objective, taking account of the risks
non-fulfilment would create, contrary to Articles 2.1 and 2.2 of the TBT Agreement;

and that, as a consequence of the EC measure’s inc onsistency with the aboveme ntioned provisions of
the TRIPS Agreement, GATT 1994 and/or the TBT Agreem ent, the EC is not in conformity with its
obligations:

• under Article 65.1 of the TRIPS Agreemen t to apply the provisions of that
Agreement, as the period of one year followi ng the date of entry into force of the
WTO Agreement has expired; and/or

• under Article XVI.4 of the Marrakesh Agreement Establishing the World Trade
Organization, to ensure the conformity of its laws, regulations and administrative
procedures with its obligation as provided in the annexed Agreements.

 Australia requests the establishment of a pane l with terms of reference in accordance with
Article 7.1 of the DSU.

 I would be grateful if you would place this item on the agenda for the next DSB meeting
scheduled for 29 August 2003.

ANNEX D-2

LETTER DATED 9 JULY 2004 FROM THE PANEL
TO THE INTERNATIONAL BUREAU OF WIPO

 At its meeting on 2 October 2003, the WTO Di spute Settlement Body established the Panel
on European Communities – Protection of Trademarks and Geographical Indications for Agricultural
Products and Foodstuffs pursuant to the requests by the United States in document WT/DS174/20 and
Australia in document WT/DS290/18 (please see th e attached documents), in accordance with
Article 9 of the Dispute Settlement Understanding. On 23 February 2004, a Panel was composed to
examine this complaint (please see the attached document with a dual sy mbol WT/DS174/21 and
WT/DS290/19).

 A number of provisions of the Paris Conventio n have been raised in these proceedings as
relevant to the interpretation of the European Co mmunities' obligations under the TRIPS Agreement.
Given that the International Bureau of WIPO is r esponsible for the administration of that Convention,
the purpose of this letter is to request, on behalf of the panel, the assistance of the International
Bureau of WIPO in the form of any factual informat ion available to it relevant to the interpretation of
the provisions in question, in particular as refl ected in the materials of diplomatic conferences,
subsequent developments in the framework of the Pa ris Union or other work under the auspices of the
WIPO as well as, to the extent available to the Inte rnational Bureau, on the state practice of the Paris
Union members.

 The specific provisions of the Paris Convention in regard to which the panel would seek this
assistance at this stage are:

 – Article 2 of the Stockholm Act of 1967 of the Paris Convention, in particular as
regards:

 (a) the national treatment obligation contained in that provision; and
 (b) the intended meaning of the term "national" used therein.

 – Any other provisions, of relevance to the categories of intellectual property at issue in
this dispute, which set out criteria for the eligibility of natural or legal persons for
protection under the Paris Convention (1967).

 The Panel may, at a later stage, wish to seek from the Internationa l Bureau further such
information on other provisions of the Paris Conven tion (1967) that have been referred to by the
parties to the dispute.

 It would facilitate the work of the Panel if such information could be made available by
Thursday, 29 July 2004.

ANNEX D-3

REPLY FROM THE INTERNATIONAL BUREAU OF WIPO
TO THE PANEL'S LETTER DATED 9 JULY 2004,
RECEIVED BY THE PANEL AND THE WTO SECRETARIAT
ON 14 SEPTEMBER 2004

 I refer to your letter of July 9, 2004, addressed to the Director General of the World
Intellectual Property Organization (WIPO), relatin g to the Panel established by the WTO Dispute
Settlement Body to examine two ongoing disputes on the basis of the matter referred to in WTO
documents WT/DS174/20 and WT/DS290/18.

 In response to your request, please find attach ed a note with five annexes prepared by the
International Bureau.

 On behalf of WIPO, I wish to reiterate our readiness to provide any further assistance.

List of Materials from Diplomatic Conferences Adopting, Revising and Amending

Articles 2 and 3 of the Paris Convention for the Protection of Industrial Property (1967)

General

 This note contains a list of the materials that the International Bureau of the World
Intellectual Property Organization (WIPO) has compiled following a request for assistance as
contained in a letter, dated July 9, 2004, recei ved from Mr. Miguel Rodríguez Mendoza, Chairman of
the Panel on European Communities – Protection of Trademarks and Geographical Indications for
Agricultural Products and Foodstuffs established by the WTO Dispute Settlement Body.

 The Panel has sought the assistance of the Intern ational Bureau of WIPO, at this stage, in
respect of Article 2 of the Paris Convention for th e Protection of Industrial Property (Stockholm Act
of 1967) and any other provisions, of relevance to the categories of intellectual property at issue in
this dispute, which set out criteria for the eligibility of natural or legal persons for protection under the
Paris Convention requesting, as indicated in the letter in question, "the assistance of the International
Bureau in the form of any factual information ava ilable to it relevant to the interpretation of the
provisions in question, in particular as reflected in the materials of diplomatic conferences, subsequent
developments in the framework of the Paris Union or other work under the auspices of the WIPO as
well as, to the extent available to the Internati onal Bureau, on the state practice of the Paris Union
members."

 The Panel's request would, at this stage, appear to concern:

 (i) the national treatment obligation containe d in Article 2 of the Paris Convention and
the intended meaning of the term "national" used therein; and

 (ii) the criteria for determining the eligib ility of natural or legal persons to enjoy
protection under the Paris Convention.

 The materials compiled by the International Bureau in respect of these two items and listed
below are confined to Articles 2 and 3 of the Paris C onvention. Article 2 refers to what is generally
referred to as the "national treatment" obligation. Article 3 provides for the assimilation of certain
persons with "nationals" of the Paris Union. Bo th articles apply generally to all categories of
industrial property under the Paris Convention.

 The International Bureau understands that the Panel's request for information does not extend
to the question of a person's "eligibility" under any specific provision of the Paris Convention
resulting from compliance with the particular require ments specified by such provision in addition to
the qualification of that person under Articles 2 and 3.

 The materials compiled include excerpts from the Official Records of the various Diplomatic
Conferences which adopted, amended or revised the provisions currently contained in Articles 2 and 3
of the Paris Convention (Stockholm Act of 1967). These provisions were last changed at the Revision
Conference held at The Hague in 1925, and have not been amended since.

 The official records of the diplomatic conf erences, from which the excerpts listed below have
been extracted, are only available in the French la nguage. The English translations of the successive
versions of Articles 2 and 3 as included in the abovementioned Acts of the Paris Convention have
been prepared by the International Bureau of WIPO and are also attached.

1. Excerpts from the Records of the Paris Diplomatic Conference (1880/1883)

General

Pages 11 to 24 (Procès-verbal de la première séance)

Pages 25 to 41 (Procès-verbal de la deuxième séance)

Article 2

Pages 42 to 47 (Procès-verbal de la troisième séance)

Articles 2 and 3

Pages 123 to 132 (Procès-verbal de la neuvième séance)

Article 3

Pages 137 to 138, 147 to 150 (Procès-verbal de la dixième séance)

Pages 161 to 167 (Séance de clôture, Projet de convention et Protocole de clôture)

General

Pages 3, 51 to 62 (Convention et Protocole de clôture)

2. Excerpts from the Records of the Brussels Revision Conference (1897/1900)

Article 2

Pages 89 and 95 to 97 (Proposition présentée par l'Administration des États-Unis)

Pages 143 to 144 ( Première annexe au procès-verbal de la Réunion préparatoire du 1
er décembre
1897 – Tableau général des propositions, contre-p ropositions et amendements soumis à la
conférence)

Articles 2 and 3

préparatoire du 1
er décembre 1897)

Pages 185, 187, 188 (Procès-verbal de la deuxième séance – 4 décembre 1897)

Pages 195 to 200 (Procès-verbal de la troisième séance – 6 décembre 1897)

Pages 309 to 311 (Procès-verbal de la neuvième séance – 13 décembre 1897)

Page 341 (Premier protocole final - 14 décembre 1897)

General

3. Excerpts from the Records of the Washington Revision Conference (1911)

Article 2

Personnes protégées et étendue de la protection; Juridiction)

Articles 2 and 3

Pages 94, 105, 106, 109 and 110 (Propositions, contre-propositions et observations présentées par
Bretagne; 4.
 Administration des Pays-Bas)

Pages 183 to 187 (Procès-verbal de la réunion préparatoire, première annexe : Tableau général des
propositions, contre-propositions et amendements soumis à la Conférence)

Pages 223 and 224 (Procès-verbal de la réunion prépar atoire, deuxième annexe : Propositions
présentées au cours de la réunion préparatoire)

articles 1, 2, 5 à 9, 11, et 16 de l'avant-projet)

Pages 245 to 247 (Procès-verbal de la troisième séance)

Pages 269 to 271 (Premier rapport présenté au nom de la sous-commission chargée d'examiner les

Pages 306, 307, 310 to 312 (Rapport présenté à la commission plénière)

4. Excerpts from the Records of the Hague Revision Conference (1925)

Article 2

Pages 222 to 225 (Exposé des motifs et propositions; II Principes fondamentaux de la Convention)

industrielle; Texte unique révisé)

Page 333 (Propositions, contre-propositions et observations)

Page 413 to 415 (Rapport de la première sous-commission)

Pages 536 to 537 (Rapport de la commission de rédaction)

Page 572 (Procès-verbal de la deuxième séance plénière)

Article 3

This provision was not discussed at the Hague Revision Conference.

5. English translations of Articles 2 and 3 as c ontained in the 1883, 1900, 1911 and 1925 Acts of
the Paris Convention