World Trade Organization Dispute
Frequently Asked Questions
Last update: 11 January 2007
Australian exporters should note that they
have to comply with all relevant EU regulations when exporting to
Australia did not contest the right of the
European Union to protect geographical indications within the EU in
the dispute. Unless they had prior trademark rights in these terms
within the EU, Australian producers are not able
to use in the EU:
- terms registered as geographical indications
within the EU, for example, "feta", "kalamata" olives;
- terms considered to be translations of
registered geographical indications, for example, "parmesan" (which
is considered to be a translation of the registered term
Which WTO Members were involved in the
dispute about the European Communities' regime for the protection
of geographical indications?
Australia and the United States each
separately challenged the relevant legislation that had been
adopted by the European Communities (the “EC”, which is
the official name of the European Union in the WTO). The challenges
were considered by the same Panel.
Third parties to Australia’s dispute
were: Argentina, Brazil, Canada, China, Colombia, Guatemala, India,
Mexico, New Zealand, Chinese Taipei, Turkey and the United States.
Australia was a third party to the United States’ parallel
What is a "geographical indication" or
Article 22.1 of the WTO Agreement on
Trade-Related Aspects of Intellectual Property Rights (TRIPS)
indications are, for the purposes of this Agreement, indications
which identify 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 of the good is essentially
attributable to its geographical origin.
What was the dispute about?
The dispute was about the EC's regime for
geographical indications (GIs) for foodstuffs and agricultural
products. The EC required that another WTO Member agree to protect
all of the EC’s GIs for agricultural products and foodstuffs,
other than those for wines and spirits, before the EC would agree
to protect any GIs from that other WTO Member
(“reciprocal” protection). The EC also required the
other WTO Member to provide the same high level of protection for
GIs from the EC as the EC itself provided before the EC would agree
to protect any GIs from that WTO Member (“equivalent”
protection). The EC required as well that the government of another
WTO Member act as the EC’s agent in matters concerning the
registration of GIs. In addition, the EC restricted the rights
attached to a trademark that included a term subsequently
registered as a GI.
See Australia's submissions to the Panel.
Some media reports suggested Australia and
the United States won. Others suggested the EC won. Which party did
Any WTO dispute can involve a number of legal
claims, some of which may be alternative claims, or contingent upon
a particular understanding of the relevant legislation.
In the dispute, Australia focused its
arguments particularly on the EC's requirements for reciprocal and
equivalent protection of the EC's own GIs before GIs from another
WTO Member could be protected in the EC. Australia focused as
well on the EC's requirement that another WTO Member act as the
EC’s agent. Australia argued that these requirements were
inconsistent with the EC’s obligations under the WTO
The Panel agreed with Australia on those issues.
Australia also targeted the restrictions
imposed by the EC on the rights of a trademark owner where a
trademark included a term that is subsequently registered as a GI
in the EC.
The Panel agreed with Australia on this issue
up to a point, in that it held the EC's regime to be inconsistent
with the EC's obligations under Article 16.1 of the TRIPS
Agreement. Article 16.1 of the TRIPS Agreement states in
The owner of a
registered trademark shall have the exclusive right to prevent all
third parties not having the owner's consent from using in the
course of trade identical or similar signs for goods or services
which are identical or similar to those in respect of which the
trademark is registered where such use would result in a likelihood
However, the Panel considered that Article 17
of the TRIPS Agreement allowed the EC to establish some limitations
on the rights to be granted to a trademark owner. The Panel
accepted a series of undertakings the EC provided with regard to
the legislation and considered that the limitations on a trademark
owner's rights established by the EC were allowed by Article
17. The Panel's findings nevertheless, and importantly,
confirm that the EC can determine any limitations on trademark
rights only with respect to the territory of the EC. It
cannot do so with respect to the territory of other WTO
Consequently, and notwithstanding that the
Panel did not find in favour of some other Australian claims,
Australia welcomed the Panel's Report.
How did the dispute benefit Australian producers and exporters?
The Government challenged the EC’s
regime to protect both the current and longer term interests of
It is now possible for Australian producers
to apply for the registration of a term as a GI within the EC, or
to object to the proposed registration of a term as a GI within the
EC, and to do so directly through the European Commission. However,
there may also be other reasons, including tariff rates and other
market access barriers maintained by the EC, which could prevent
exports to markets in the EC of significant quantities of some of
the products in respect of which registration of a term as a GI may
In addition, because of the EC’s
reciprocal and equivalent protection requirements, Australian
products could gradually have been prevented from being sold in
third country markets using product descriptions that consumers
knew and understood. Australian producers and exporters could have
been forced to start again in those markets using different product
descriptions. Potentially affected products include dairy and
smallgoods, although a diverse range of other foodstuffs and
agricultural products could also have been affected, including
What happened next?
The EC had until 3 April 2006 to bring its
legislation into compliance with its WTO obligations. By that date,
the EC had adopted new framework legislation and put in place a
procedure under which persons, both natural and legal, from other
WTO Members could apply for, or object to, the registration of a
term as a GI within the EC.
Australia considers some minor aspects of the
new framework legislation are likely inconsistent with the
EC’s WTO obligations and have raised these with the
Did the dispute relate to the Doha Round
The dispute concerned a set of issues
relating to the EC's implementation of its WTO obligations as these
were agreed during the Uruguay Round. It did not
relate to the Doha Round negotiations.
Did the dispute relate to other Australia
– EU disputes?
No. The dispute concerned a discrete package
of issues unrelated to any other dispute.
Did the dispute affect wines and spirits and
the Australia-EU bilateral wine agreement?
No. Wine and spirit GIs were not at issue in
Where can I get more information?
More information is available from the