WTO issues interim decision against expansion of GI protection

Recent media reports indicate that the World Trade Organization (WTO) has released an interim ruling against the European Union on an issue concerning geographical indications (GIs). Interim rulings are intended to be confidential rulings between the parties and the WTO, but it is not uncommon for results to become available to the press.

According to the media reports, the WTO sided with the United States and Australia against an EU proposal that would have expanded the protection given to GIs. The European Union is arguing that many of its member states' most famous products are being abused by non-EU producers trading off their identities. It cited the example of Italian ham producers from Parma having to re-brand their product as 'super ham' in Canada because local producers had already registered the PARMA HAM mark.

The proposed changes related to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs) and aimed to extend to a wide range of products the particularly strong protection given to GIs in respect of wines and spirits.

Article 22 of TRIPs requires WTO member nations to provide legal means to prevent GIs from being used in ways that are misleading to the public or amount to unfair competition. Wine and spirit GIs are given additional protection by Article 23, prohibiting use of specific GI terms without regard to whether the use is misleading or unfair. Article 24 imposes an obligation on member countries to negotiate any expansion of the scope of GIs recognized under Article 23.

Opponents to the EU's plan believe that it would have two important (and potentially damaging) effects. They argue that it (i) would augment the bureaucracy involved with the registration of GIs under Article 23, and (ii) could invalidate existing trademarks without the need to establish confusion or unfair competition.

For example, Canada distinguishes between Article 22 GIs and Article 23 GIs in the level and means of protection afforded. Article 23 GIs have been integrated into the Canadian Trademarks Act, where a list of prohibited GI terms and permitted generic terms are detailed. Article 22 GIs, by contrast, are not uniquely regulated. Rights holders may avail themselves of the protections provided by certification marks (also under the Trademarks Act) and can assert rights in unregistered marks by way of an action in passing off.

The WTO is due to give its final ruling in the case later this year. The interim verdict is not binding but gives a clear indication of the WTO's thinking on the issue.

For a background discussion of the EU proposal and other GI issues, see Let the best ham win: reforming GI protection worldwide.

David Wotherspoon and Geoff Bowman, Fasken Martineau DuMoulin LLP, Vancouver