EU and United States declare victory following
WTO geographical indicators ruling

March 25, 2005

A March 15 ruling by the WTO on the protection of geographic indicators left both sides in the conflict declaring victory. The European Union hailed the ruling as a proof that its protections are compatible with international trademark law. Producers in the United States and Australia, who were not allowed to apply for protection of their own geographical indicators under current EU rules, were pleased by the WTO order to extend such trademark protection to products not originating in the EU. In addition, the U.S. said that the ruling acknowledged the priority of existing trademarks over the EU protections.

At the heart of the issue are EU rules protecting trademarks for products like Bordeaux wine or Roquefort cheese. These "geographical indicators" serve as a sort of guarantee of quality, allowing only products actually produced in a region by approved methods to bear that region’s name. The EU had claimed that U.S. and Australian food and beverage producers were not eligible for protection of geographical indicators because European products were not afforded such protection in those countries of origin. Now, however, producers of Florida oranges, Idaho potatoes or Port Lincoln tuna may apply for the same rights as the makers of Portuguese Madeira wine or Parma ham.

While upholding the rights to geographic indicators, the WTO also recognized the priority of existing trademarks. This was a major victory for CIPR member Anheuser-Busch, whose Bud and Budweiser registered trademarks face challenges from the Czech brewer Budejovicky Budvar. The WTO ruling dismissed the Czech brewer’s claim that "Budweiser," the German translation of "Budejovicky," is legally the same as the non–German trademark. Thus, Anheuser-Busch’s trademarks, which are already registered in 20 of the EU’s 25 member states, were upheld and Budejovicky Budvar was barred from using translations of its name that are already protected.

The ruling indeed does represent a victory for both sides. Not only was Anheuser-Busch granted protection of its trademarks, but non-EU producers will also be able to apply for protection of their own geographical indicators. At the same time, the WTO recognized European concerns over protection of well-known geographical origins, which are often not recognized by other countries. The conflict is unlikely to end here, as the makers of Genuine Parma ham, for example, are still unable to market their product in Canada due to a local producer that has already registered the trademark.

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