Document: Oral Statement
Date: 15 March 2004
Document codes: WT/DS290/R/Add.1
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 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

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,
EC – Bananas European Communities – Regime for the Importation, Sale and Distribution of
Bananas, Report of the Appellate Body,
Guatemala – Cement I Guatemala – Anti-Dumping Investigation Regarding Portland Cement from Mexico,
Report of the Appellate Body,
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,

Canada – Wheat Canada – Measures Relating to Exports of Wheat and Treatment of Imported
Grain, Preliminary Ruling of the Panel, WT/DS276/12.

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.
[…]
…

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 establish 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.

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 the "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.

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.

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 identified 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 the 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 depend 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 –

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.

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 63.3 33, 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 request 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, paragraph 61, referring to paragraph 49.
33 EC Request for a Preliminary Ruling, paragraph 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.

… 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 alleged 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.

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 argument 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 procedural 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.

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.

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

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 agricultural 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 more extensively in 2003, in part
"to guarantee that the Community registration pro cedure is available" to WTO Members meeting
conditions of reciprocity 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.

• 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 unfair 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.

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.

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 Australia 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 1997 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 consultation 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 implementing powers conferred on the Commission is at Exhibit COMP-8.

"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.

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 several 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 which 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 names will no longer be included in the Register.

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.

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.

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 procedure 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 Regulation 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.

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

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

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 first 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 publication 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 grounds 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.

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 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;

• 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 10bis(1);

• does not assure to WTO Member nationals appropriate effective legal remedies to
repress acts of unfair competition, contrary to Paris Article 10ter(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.

• 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 reference 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 10bis and 10ter, 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 annexed 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

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 REQUIREMENTS OF THE TRIPS AGREEMENT AND OF THE PARIS CONVENTION
(i) Article 16.1 of the TRIPS Agreement
71. TRIPS Article 16.1 26 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.

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 limited 28 exceptions to the rights conferred
by a trademark. The provision cites fair use of descriptive terms to illustrate 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 20 30 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 prescribing 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.

• 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 10bis 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 also have to take into account honest practices established in international trade".
34 Article 10ter 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.

(vi) Article 41 of the TRIPS Agreement
77. TRIPS Article 41 35 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 property rights covered by this Agreement …". 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 parties 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.

(vii) Article 42 of the TRIPS Agreement
78. TRIPS Article 42 36 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 1.1 38 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 constitutional 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) ecclesiastical; 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).

• 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; …
…

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 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#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 trademark 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)".

• 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 Article 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 owner of a registered trademark will be considered
by the ultimate decision-maker, being the Committee 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 the 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.

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, contrary 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 Regulation 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

a trademark's reputation and renown and the length of time it has been used,
consumers are likely to be misled as to the true 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 SPECIAL 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.

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 greater 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 undertakings, 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.

115. Accordingly, the EC measure is inconsistent with the EC's obligation pursuant to Paris
Article 10bis(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 proposed registration of an EC-defined GI.

118. Accordingly, the EC measure is inconsistent with the EC's obligations pursuant to Paris
Article 10ter(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 10bis.

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 between 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).

footnote 4, it is clear that TRIPS Article 42 requir es WTO Members to provide for the enforcement of
other covered intellectual property rights only through a court 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.

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) considered 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.

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 property rights which are not unnecessarily complicated
or entail unwarranted delays, contrary to TRIPS Article 41.2.

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 offered 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.

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 Importer 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

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 Article 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 for 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 substantiate 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.

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 10bis(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 rights, 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.

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 10ter(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 10bis(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 subject 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;

• 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 22.2 58 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 GIs, 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 10bis.

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 competition within the meaning of Paris Article 10bis.
The EC measure is thus inconsistent 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 other than the true place of origin in
a manner which misleads the public as to the geographical origin of the good;
(b) any use which constitutes an act of unfair co mpetition within the meaning of Article 10bis of
the Paris Convention (1967).
59 OED, Vol. 2, page 2565.

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 issue 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 that 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.

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 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 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.

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. Unless another WTO Member is willing and able:

• to give identical or equivalent guarantees 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:

Communauté.
70 OED, Vol.1, page 517, defines "corresponding" in relevant part as "[t]hat corresponds to something
else; analogous, equivalent, proportional".

• 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.

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

• 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 imported product. Moreover, those 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 like 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 1.3 76, 2.1 77 and 3.1 78 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:

• 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 with 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.

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 industrial 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 legitimate 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.

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 for 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 could 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.

Regulation No. 2400/96 as amended where th e six-month period for lodgement of
objections under Article 7.1 of Regulation 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 reside in or are established in an EC Member State.
92 The Feta judgement, Exhibit COMP-11, paragraph 21.

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 GIs 93 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 Member nationals in respect 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 formalities 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.

(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 another 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 "Zafferano 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.

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 inconsistent 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.

• 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 10ter(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.

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 identifiable 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 applicable 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, flammability, 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.

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 considered as the way in which something is
produced;107 and

• "related" processes and production methods may 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 WTO 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.

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.

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 2.1 113 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 national 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 relationship 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.

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 products 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.

"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.

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, contrary 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 2.2 127 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

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 less 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 accordance with the provisions of this Agreement.
129 Article XX(d) of GATT 1994, headed "General Exceptions", provides 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 between countries where the same conditions prevail,
or a disguised restriction on international trade, nothing in this Agreement shall be construed to prevent
the adoption or enforcement 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.

(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 "inspection 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.

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 structure requirement could be
meaningless if there is only a limited geographical region in a WTO Member in which a good can physically be
produced.

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 Article 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 administrative 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.

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 provided 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.

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.

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 reference 2 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 raised 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.

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 provisions 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 inconsistent 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 March 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.

 • 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 justified 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 the 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.

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 trademarks 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.

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.

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 interpretation 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 domestic 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 Agreement. 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 Regulation having regard to all relevant factors, 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.

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 bilateral 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 August 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.

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 Article 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 9 th 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 located 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 originating in your territory ever sent 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

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 satisfying 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.

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 Article 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 registration 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.

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 that 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.

• in the case of legal persons, such persons – whet her companies, associations or other entities
recognised in accordance with the 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 persons 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. This 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.

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 context 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 Member 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

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 despite 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

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 between 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 inherently 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.

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 country? 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 rights as private rights: in the absence of express
commitments voluntarily entered into by Australia at international level which 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 are 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 application 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

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 certification, 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 application 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

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 protected 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" rather 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.

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 Article 12(2) of Regulation
(EC) No. 2081/92 is meant to be read in the following way: "whichever indication is registered later
would normally be required to indicate the country of or igin." If the EC interpreted Article 12(2) this
way in practice, would this satisfy Australia, or would Australia also view this interpretation as
providing less favourable treatment 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 interpretation 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 avoid 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 prevailing 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 specific 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.

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 consumers 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 Agreement, 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 conditions 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 together 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;

(iii) compliance with which is mandatory;
the EC measure is a technical regulation within 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.

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 trademark, 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 Articles 3(1), 4(2) and 6(6) of the Regulation? Do
other criteria, such as similarity of signs and goods fall within "reputation and renown"? Is the
criterion of "length of time [a trade mark] has been used" relevant to its liability to mislead if the
trademark has not been used for a significant, or considerable, length of time? EC

69. Can the EC provide the Panel with any official statement predating its first written
submission that application of the grounds for registration, 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

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 otherwise 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 circumstances 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.

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 TRIPS 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

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 registered 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;

• 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 registration of a trademark that contains 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 same 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 positive 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

• 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";

• 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 perpetuity 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 the TRIPS Agreement applies to these measures. AUS

The first registrations of EC-defined GIs under Regulation 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 obligations 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 registrations? 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.

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 registrations 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 Agreement, as it has never provided
the means to enable such issues to be tested.

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.

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 wine and some earlier trademarks, under certain conditions.
 (a) Is this understanding correct?

 (b) If so, how does the United States reconc ile this form of co-existence with the
interpretation of Articles 16.1 and 24.5 of the TRIPS Agreement that it has put
forward in this dispute?

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 provided 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.

 (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 did 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?

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:

 (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 the 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 applications 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 their territory? If yes, what action have they taken?

29 The provisions of international agreement do not have direct effect in Australian law.

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.