Geographical Indications and WTO Negotiations

CRS Report for Congress
Received through the CRS W eb
Geographical Indications and
WTO Negotiations
Charles E. H anrahan
Senior Specialist i n Agricultural Policy
Resources, Science and Industry Division
Summary
The i ssue o f ex p anding intellectual p r operty p rotections for geographical
indications for wines, s pirits, and agricu ltural p roducts is being d ebated in the W orld
Trade Organization (WTO). Geographical indications are important in international
trade b ecause they are commercially valuable. S ome European and developing countries
want to es tablish t ougher res trictions and limits on the use of geographical names for
products, while the United S tates and associated countries argu e t hat t he ex isting l evel
of protection o f s uch t erms is adequate. Decisions about the future s cope of protection
of geographical indications will be made as the current (Doha) round of multilateral
trade negotiations continues. Congress is monitoring the negotiations and t heir potential
impacts o n U.S. p roducers. This report will be updated as events warrant.
What Ar e G eogr aphi cal I ndi cati ons?
The Urugu ay Round Agreement o n T rade-Rel ated Aspects o f Inte llectual P roperty
Righ ts (TRIPS) defines geographical indications as “indications which i dentify a good as
originating i n t he territory of a M em ber, or a region or l ocality in that territory, where a
gi ven quality, reputation or other charact eristic of the good is essentially attributable to¹
its geographical origin.” The t erm i s m ost o ften, although not ex clusively, applied t o
wines, spirits, and agricultural p roducts. E x a m p l es o f geographical indications are
Roquefort cheese, Id aho potatoes, Champagn e, or Tuscan olive o il.
Why Ar e Geogr aphi cal I ndi cati ons I m por tant?
Geographi cal i ndi cat i ons prot ect consum ers from t he use o f d ecept i v e o r m i s l eadi n g
labels. They also p rovide consumers with choices among products and with information
on whi ch t o b ase t hei r choi ces. P roducers b enefi t because geographi cal i ndi cat i ons gi ve

¹ Article 22.1 of the T RIPS Agreement. See Section 3: Geographical I ndications of the T RIPS
Agr eement [ ht t p : / / www.wt o.or g/ engl i s h/ docs_e/ l e ga l _ e/ 27-t r i p s_04b_e.ht m#3] f o r f ul l t ext .
Congressional Research Service ˜ The Library of Congress

them recogn itio n f o r the d istinctiveness o f t heir products in the m arket. They are t hus
commercially valuable. As i ntellect ual property, geographical indications are eligible for
relief from act s o f i n f ringem ent and/or unfai r competition.² The u se of geographical
indications for wines and d airy products par ticularly, which some countries consider to
be prot ect ed i n t el l ect ual p roperty, and o t h ers consider to be generic o r s emi-generic t erms,
has b ecome a contentious international t rade issue.
What Does the Tr i ps Agr eement S ay About
the P r otecti on of G eogr aphi cal I ndi cati ons?
The TRIPS Agreement p rovides t wo levels of protection for geographical i ndications
and lists ex ceptions to TRIP S rules for t heir protection.
TRIP S p rovides general s tandards of protectio n f o r all g eographical i ndications.
W T O m embers must provide the l egal means f or interested parties t o p revent t h e
misleading o r d eceptive u se of these t erms and o ther forms o f unfair competition. W TO
members m ust refuse or i nvalidat e t he regi stration of a misleadin g t rademark which
contai ns or consists of a geographical indication, if a m em ber’s legi slation s o permits or
at t h e request of an i n t erest ed part y.
TRIP S p rovides additional protection f or geographical i ndications for w ines and
spirits. W TO member countries must provide th e l e gal means for interested parties t o
prevent misuse o f a geographical indication o f wi n es and s pi ri t s even where s uch u se does
no t mislead the public. No ex ception i s granted even if the t rue o rigi n o f t he goods is
i ndi cat ed, t he geographi cal i ndi cat i o n i s u sed i n t ransl at i on, or i s accom p ani ed b y
ex pressions such as “kind,” “typ e,” “styl e,” “imitation,” or the like. The registration o f
a misleading t rademark for wines or spirits must be refused or i nvalidat ed. To facilitate
the protection of geographical indications for wines , W TO members agreed to negotiate
the establishment of a multilateral s ys tem of notification and regi stration of geographical
indications for wines eligible for protection i n t hose m em bers participating i n t he system .
Exceptions to the p rotection o f g eographical i ndications i n cl ude: w here a t erm h as
been used for at l east 1 0 years p rior to April 15, 1994, or in good faith if prior t o t hat d ate;
where a t erm i s al s o s ubj ect t o good fai t h t radem ark ri ght s; where a t erm h as si gn i fi cance
as a p ersonal n am e; and w here a t erm h as becom e i d ent i fi ed w i t h t h e com m o n n am e for
agoodorservice.
Why Was Pr otecti on of G eogr aphi cal I ndi cati ons
I ncl uded i n t he Tr i ps Agr eement?
D u r i n g the Urugu ay Round multilateral n egotiations (1986-1994), t he European
Union (EU) and Switzerland made proposals for a higher level of protection for
geographical indications than provid e d i n e x i sting i nternational agreements. They also

² Eleanor K . Meltzer, “What You Need to K now About Geographical Indicati o n s a n d
T r ademarks ”, Vi rginia Lawyer, J une/J uly 2002, pp. 18-23.

proposed a m ultilateral registr y f o r geographical indications.³ The EU/Swiss p roposal
would have eliminat ed m o st of the ex ceptions in Article 24 which permit the use, for
ex ample, of such names as C hablis, Burgundy, o r C hampagne based o n p rior or good faith
use. The United S tates, on the other hand, while pressing for s trong intellectual p roperty
protections in general, proposed more limited p ro tections for geographical indications.⁴
The United S tates p roposed simply (1) t hat m ember countries would p rotect geographical
indications of any p roducts through registration o f certification o r collective m arks (see
below), and (2) t hat appellations of origin of wines t hat h a d n o t become generic n ames
would b e guaranteed protection against misleading u se.
The res ulting TRIPS provisions for geographical indications repres en t e d a
compromise b etween these t wo positions an d postponed d ebate over a multilateral
r e gi s t r y for wines and s pirits and over ex t ending high er protections to agricultural
geographical indications. The TRIP S c o m prom i s e o n p rot ect i o n o f geographi cal
indication s r e flects m ore t he EU’s ex pans ive p roposals t han t he United S tates’ more
modestones.
How Ar e Geogr aphi cal I ndi cati ons Pr otected
in the United States?⁵
In the United S tates, geographical i ndications are p rotected under t he U.S.
Trademark Act (15 U.S.C. 1051 et seq.). S ection 4 o f t h e Trademark Act (15 U.S.C.
1054) provides for the registration o f “certification m arks including indi c a t i o n s of
regi onal o rigi n.” The k inds of c e r t i f i c ation m arks reco gn ized in the Trademark Act
include marks t hat certify t hat goods or services originate i n a specific geographic region.
These would b e t he kinds of marks m ost likel y v iewed as geographical indications under
TRIPS.⁶ P art i es assert i n g ri ght s t o u se a geographi cal i ndi cat i o n can ob t a i n form al⁷
protection via use of t he tradem ark s ys tem t hrough registration as a certification m ark.
The U.S. s ys tem for reco gn ition for geographic i ndications applies equally to foreign
geographic i ndications. An ex ample is U.S. Regi stration No. 571,798 (“ROQUEFORT”)
for t hat French cheese. Ot her m eans al s o w ould b e available t o p rotect geographical
indications (see footnote 5 for d etails).
The N ort h Am eri can Free Trade A greem ent (NAFTA) p rovi des p rot ect i o n for som e
specific g e o gr aphical indications by reco gn iz ing t hat Bourbon W h iskey, Tennessee

³ WT O, Draft Agree m e n t on TRIPS: Communi c a t i o n f r o m t he EC ( M T N.GNG/ NG11/ W / 68) ,
March 29, 1990 and Draft Agreement t o t he GATT on the Protection of TRIPS : Communication
f r o m Swi t zer l a nd ( M T N/ GNG/ NG11/ W/ 73) , M ay 14, 1990.
⁴ WT O, Dr aft Agreement o n T R I PS : Communication from t he United States,
( M T N.GNG/ NG11/ W/ 70) , M ay 1, 1990.
⁵ For details on the protection of geogr aphical indications in the United States, see Information
on the System f or Protection of Geographical I ndications in the United States of America,World
T r a d e O r ganization, Council for T rade-Related Aspects of Intellectual Property Rights:
Communication of t he Permanent M ission of the United States ( IP/C/W/76/Add.10), September

19,1997.

⁶ Meltzer, op. cit ,p.21.
⁷ Meltzer, op. cit ., p. 20.

Whiskey, Canadian Whiskey, Tequila, and Mezcal are “distinctive p roducts” in the
NAFTA countries where t hey are produced (NAFTA, C hapter 3, Annex 313). T he so-
called D’Amato amendment (Section 910 of P.L. 105-32) provides authority for t he use
of “s emi-generic” names of wines if the t rue place of origin al so is indicat ed.⁸ (This use
is a m ai n point of contention i n both m ultilateral and bilateral negotiations with the EU.)
What GI I ssues Ar e Bei ng Debated i n t he Doha Round?
Two i ssues concerning geographical indica tions are under consideration i n t he Doha
Development Agenda: negotiations concerning a m ultilateral regi stry for wine and spirits;
a n d d e b a t e o v e r e x t ending additional p rotections f o r a gr i c u l t u r a l g e o gr a p h i c a l i n d i c a t i o n s .
(1) Negotiatin g a Mu l tilateral Registry f or Win e an d S p i rits
The M inisterial declaration l aunching the Doha round of mu ltilateral trade
nego tiations established t he fifth W TO Mi nisterial C onference (September 10-14, 2003
in Cancun, Mex i co) as t he deadline for completing negotiations for a multilateral s ys tem
of notification and regi stration.⁹
In the n egotiations, t he EU has p roposed a m ultilateral s ys tem of notification and
regi stration t hat would create obligations for W TO member countries to grant ex clusive
righ ts for i ndividual geographic i ndications, rather t han allow i nterested p arties t o apply
for p rotection according t o a count ry’s national l egal procedures.¹⁰ Participation would
be voluntary, but the m ultilat eral registry would have m andatory effect , s o t hat
notification o f a geographical indication b y one country creates a p resumption t hat i t m ust
be protected everywhere. Under t he EU proposal, a country would b e required t o grant
ex clusi v e r i ghts t o p roducers i n t he notifyi ng country, unless i t s uccessfully challenged
the notification i n W TO dispute settlement.
The EU lists am ong the advantages of a registry with mandatory effect the following.
It would p rovide i n formation t o m embers about which geographical indications are
prot ect ed i n each m em b er’s t erri t o ry. It w oul d m ake operat i onal t he prot ect i ons ex t ended
to geographical indications for wines and s pirits provided i n TRIPS Article 23, without
requiring members t o enact new l egislation or administrative procedures . It would provide
transparency and l egal certainty to international t rade in wine and s pirits.

⁸ Names t reated as semi-generic are Angeli ca, Bu rgundy, C laret, Chablis, C hampagne,
Chianti, Malaga, Marsala, Madei ra, Moselle, P ort, Rhine W ine or Hock, Sauterne, Haut
Sauterne, S herry and T okay.
⁹ Article 18 of World T rade Organization, Minist erial Conference, Fourth Session, Nove mber 9-

14, Ministerial Declaration (WT / MIN(01)/DEC/1) a dopted 14 Nove mber 2001.

¹⁰ World T rade Orga niza tion, Council for T rade-r el ated Aspects of Intellectual Property Rights,
Implementation of Article 23.4 of the TRIPS Ag reement Relatin g t o t h e E s tablishment of a
Multilateral System of Notification and Registration of Geographic I ndications : Communication
from t he European Communities and their member States ( IP/C/W/107 and IP/C/ W/107/Rev.1),
J uly 28, 1998 and J une 22, 2000.

T h e U n i t e d S t at es, J apan, C h i l e, C anada, New Zeal and, Aust ral i a and o t h ers h ave
all ex p ressed concern about a registry with mandatory effect on grounds that it would l ead
to new and cos t l y a d ministrative burdens an d l egal obligations. They s ee the p roposed
multilateral registry as a clearing house for in formation about the p rotection o f s pecific
geographical indications in each country. App lications for p rotect i o n o f geographical
indications would b e m ade t hrough ex i sting l egal procedures in a W TO member country.
While multilateral n egotiations have been underway, t he United S tates and the EU
have been negotiating a bilateral wine agreem ent. A principal EU objective i s t o s ecure
an end t o U.S . u se of “sem i -generi c” nam es for wines (see footnote 5 ). The EU i s also
seeki n g p rot ect i o n for what i t cal l s t radi t i onal t erm s appl i ed t o w i n es such as “t awny” o r
“ruby red”, am ong ot hers. A pri n ci pal U.S . obj ect i v e i s t o gai n accept ance b y t he EU of
U.S. wine-making p ractices. Because the EU only p ermits wine made in accordance with
its regulations to be sold in the EU, a s ubstantial amount of U.S. wine is blocked from t hat
m arket . A ust ral i a and, m o re recent l y, C anada h ave concl uded b i l at eral w i n e agreem ent s
with the EU which contai n m utual recognition of wine m aking practices and agreem ent
by Australia and C anada t o phase out the u se of the generic names s till permitted under
U.S.law.
(2) E xtending Additi onal Protection to Geographical I ndications f or Agricultural
Products
T h e s e c o n d issue under d ebate i n t he TRIP S C ouncil is that of ex tending t h e
protection o f geographical indications provi ded for in Article 23 of the TRIPS Agreem ent
to products other t han wines and s pirits. Thi s and other s o-called implementation i ssues
of importance t o d eveloping countries were to have been addressed b y t he end o f 2002,
butwerenot.
P roposals t o ex t end p rotection accorded wines and spirits to other agr i c u l t u r al
products have been made by the EU¹¹ and b y a group of European an d d eveloping
countries.¹² Additional protection for geographical indications of agricultural p roducts
is viewed as a corollary of efforts t o liberalize agricultural t rade and t o promote trade of
goods with high er added v alue. For ex ample, the EU ex plicitly links ex tending protection
for geographical indications to its strategy to pro m o t e t he development of quality
agricultural p roducts.¹³ Proponents also argue that increased protection wou ld bring m ore
effective protection of consumers. Negotiations on this issue are taking place in the
T R IP S C ouncil, but the EU h as linked reaching agreement o n geographical indica t i o n s
to its willingness t o deal with the agricultural n egotiating i s s u e s of market access,
domestic support, and ex port s ubsidies.

¹¹ T he EU’s r evised proposal for a registry of ge ographical indications, IP/ C/W/107/Rev.1 a pplies
not only t o wines and s pirits but also to agricultural products.
¹² World T rade Orga niza tion, Council for T rade-Rel ated Aspects of Intellectual Property Rights,
Proposal from Bulgaria, Cuba, The Czech Repub lic, Egypt, I celand, India, Jamaica, Kenya,
Liechtenstein, M auritius, Ni geria, Pak i s t a n, Slovenia, Sri Lanka, Switzerland, Turkey, and
Venezuela, IP/C/W/247/Rev. 1, May 17, 2002.
¹³ J ohn Baize, “EU’ s New Farm Policy Signals the Way on Quality”, World Perspectives, pp. 4-5,
July2,2003.

Conversely, the United S tates and a number of o ther countries argu e t hat t he ex isting
level o f p rotection p rovided b y TRIP S enables countries to maintain acces s t o e x i sting
markets; maintains ongoing access t o t rade opportunities i n n ew and emerging m arkets;
provides adequate protection t o p roducers and consumers; and does not impose n ew
administrative costs and l egal obligations on m e m b ers .¹⁴ Additional costs cited by t he
United S tates i nclude potential for consumer confusion (from re-naming and re-labeling
products), potential p roducer conflicts within the W TO, and a h eigh tened risk o f W TO
disputes.
The d ebate over ex t ending protection for geographical indications of agricultural
products is reflected in the U.S. request for consultations (the first s tep i n W TO dispute
settlement) with the EU on EU regulations for t he protection of geographical indications
for wines and s pirits (Community Regulation 1493/99) and for other agricultural p roducts
(Community Regulation 2081/92). The U.S. request, which has b een joined by Australia,
argu es t h at t h e E U regul at i ons vi ol at e t he TRIP S Agreement (Article 22) by requiring
speci fi c b i l at eral agreem ent s , rat her t han recours e t o n a t i onal l egal syst em s, before
according recogn ition t o o ther countries’ r egistered geographical indications.
Commentat ors have suggested that this possible challenge t o EU regulations anticipat es
that EU enlargement t o i nclude 10 central an d ea s t e r n European countries could create
addi t i o n a l p robl em s for U.S . regi st ered t radem ark o wners v i s -a-vi s EU prot ect ed
geographical names.¹⁵ A cas e i n point is the U.S.-owned Budweiser b eer trademark
which, although registered i n a number o f E U countries, could come i nto question i f t he
C z ech R epu b l i c regi st ers and cl ai m s t h e n am e Budwei ser, even i n t ransl at i on, as a
protected geographical indication i n t he EU.
Outl ook and Congr essi onal Rol e
Decisions about geographica l i n d i c a tions will be on the agenda of the W TO
Mi nisterial C onference in Cancun. The C hairm a n o f t h e A gri cu l t u re n e gotiating group has
identif i ed geographical indications for agricultural p roducts as an unresolved i ssue.¹⁶
Congress is cl osel y m onitoring the Doha negotiations; t he House Agriculture Committee
has s chedu l ed oversight hearings on the p ro t ect i o n o f geographi cal i ndi cat i ons for
agricultural p roducts. S hould n egotiations re sult in agreements that require changes i n
U.S. law covering geographical indications,Congress wouldtakeuplegislationto
implement such an agreement under ex p edited (fast track) p rocedures established i n t he
Trade Act of 2002 (P.L. 107-210).

¹⁴ World T rade Orga niza tion, Council for T rade-Rel ated Aspects of Intellectual Property Rights,
Extension of t he Protection of Geographical I ndications for Wines and Spirits to Geographical
Indications for all Products: Potential Costs and Implications. Communication from Argentina,
Australia, Canada, Chile, Guatemala, New Zealand, Paraguay, and the United States ( IP/C/W/28,
June20,2001.
¹⁵ “U.S. Pressures EU ove r Geogr aphic Names, T radema rk Fight Looms”, Inside U.S. Tr a de ,
April11,2003.
¹⁶ World T rade Or ganization, Committee on Agr iculture, Special Session, Negotiat i ons on
Agriculture: Report by t he Chairman to the TNC, (T N/AG/10), J uly 7, 2003.