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Geographical Indications Under Recent EU Trade Agreements

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Abstract

In recent years, the EU has increasingly moved towards securing protection of EU-based GIs through bilateral and regional general trade agreements. This article looks at five such agreements, namely those negotiated with South Korea, Colombia and Peru, the Central American countries, Canada, and Georgia. It comes to the conclusion that the EU has largely succeeded in achieving its negotiation objectives, including protecting vast lists of EU-based GIs in the territory of its trading partners, phasing-out certain forms of use of EU GIs, and providing for the co-existence of prior trademarks with the GIs covered by the agreements, among others. However, the article also highlights numerous differences between the agreements, in particular concerning aspects such as the scope of protection granted and the enforcement of GI rights. Moreover, it discusses general issues, such as the lack of direct applicability of the GI protection provided for by the agreements and its implications on the protection of foreign GIs in the EU.

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Notes

  1. European Commission (2006), p. 18.

  2. Melo Araujo (2013), p. 440.

  3. Melo Araujo (2013), pp. 452–453; Drahos (2003), pp. 6 et sqq.; cf. also European Commission (2006), p. 18: “The EU has consistently defined its own FTAs to ensure they complement the multilateral trading system and to make them a stepping stone rather than a stumbling block for further multilateral trade opening.”

  4. Vivas-Eugui and Spennemann (2006), p. 20.

  5. Comprehensive Trade and Economic Agreement, published on 26 September 2014 and available at http://trade.ec.europa.eu/doclib/docs/2014/september/tradoc_152806.pdf. Last Accessed 28 April 2015.

  6. Transatlantic Trade Investment Partnership, currently being negotiated between the EU and its Member States on one side and the United States of America on the other.

  7. In line with common practice, all the agreements are also referred to in this article as “FTAs”.

  8. Free Trade Agreement between the European Union and its Member States, of the one part, and the Republic of Korea, of the other part, 2011 OJ L 127/1, hereinafter “EU-Korea FTA”. This FTA was the first “real” Global Europe FTA, thus being of particular interest for the present analysis.

  9. Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part, 2012 OJ L 354/3, hereinafter “EU-Colombia/Peru TA”.

  10. Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America on the other, 2012 OJ L 346/3, hereinafter “EU-Central America AA”.

  11. Association Agreement between the European Union and the European Atomic Energy Community and their Member States, of the one part, and Georgia, of the other part, 2014 OJ L 261/4, hereinafter “EU-Georgia AA”.

  12. As part of the ENP agreements with Moldova and Ukraine were also recently signed; this article looks at the EU-Georgia AA only, as an example for this type of agreement.

  13. Advisory Group International Aspects of Agriculture (2012), pp. 8–9.

  14. “In other words, the indication is protected because it is listed in the agreement, regardless of whether it qualifies as an indication of origin in the country where protection is sought”, Heath (2005), p. 124.

  15. Cf. for a detailed analysis of the numerous cases litigated around the world, Heath (2011) passim.

  16. Cf. for example CJEU, Case C-120/08 Bavaria NV v. Bayerischer Brauerbund eV 2010 ECR I-13393; case C-343/07 Bavaria NV, Bavaria Italia Srl v. Bayerischer Brauerbund eV, 2009 ECR I-05491; and the brief overview given of those cases as well as Australian proceedings by Blakeney (2014), para. 3.198–3.206.

  17. EC – Trademarks and Geographical Indications (US) (2005), WT/DS174/R and (Australia) (2005) WT/DS290/R.

  18. The dispute was on a number of provisions of the 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, 1992 OJ L 208/1, a predecessor of the current Quality Schemes Regulation, which read together, ensured that GIs, once registered could be used, even if prior conflicting trademarks existed (in particular Art. 14(2)).

  19. EC – Trademarks and Geographical Indications (US) (2005), WT/DS174/R and (Australia) (2005) WT/DS290/R, para. 7.670, 7.688.

  20. For example, the following names that had been used for years in many countries as more or less generic terms are also included in at least some of the lists attached to the agreements discussed herein:

    “Feta” (with the exception of the EU-Georgia AA; moreover, Chapter 22 Art. 7.6(1) CETA contains an exception for the use of “Feta” in combination with terms like “kind”, “type” or “style”), “Fontina” (with the exception of the EU-Colombia/Peru TA; moreover, Chapter 22 Art. 7.6(1) CETA contains an exception for the use of “Feta” in combination with terms like “kind”, “type” or “style”), “Munster” (only in the EU-Georgia AA and CETA, but again with above exception), “Gorgonzola” (in all agreements, but with above CETA-exception). The treatment of the term “Parmesan” is a special case in that it may be seen as a translation of the GI “Parmigiano Reggiano”, which is included in all the agreements; “Parmesan” is not included in any of the lists but provisions against the use of translations can be found in the EU-Korea FTA, the EU-Central America AA and the EU-Georgia AA, which opens up the possibility of protection against the use of the term “Parmesan” for products that do not originate from the region identified by the term “Parmigiano Reggiano”. CETA goes the opposite way by even clarifying that trademarks containing or consisting of the term “Parmesan” may be protected in Canada, Chapter 22 Art. 7.6(11) and Annex IIa. A similar approach was taken regarding the name “Nürnberger Bratwürste”. The agreements of the EU with Central America, CETA and Georgia include that name in their GI lists. CETA does, too, but provides for a transition period in Chapter 22 Art. 7.6(3).

  21. Regulation (EU) No 1151/2012 of the European Parliament and of the Council of 21 November 2012 on quality schemes for agricultural products and foodstuffs, OJ L 343/1.

  22. Council Regulation (EC) No 1234/2007 of 22 October 2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), OJ L 299/1, as amended by several regulations, including Council Regulation (EC) No 491/2009 of 25 May 2009 amending Regulation (EC) No 1234/2007 establishing a common organisation of agricultural markets and on specific provisions for certain agricultural products (Single CMO Regulation), OJ L154/1.

  23. Cf. for example the Indian law: Sec. 17 of the Geographical Indications of Goods (Registration and Protection) Act, 1999 No.48 of 1999 (30 December, 1999) (available at http://www.wipo.int/edocs/lexdocs/laws/en/in/in010en.pdf. Accessed 29 April 2015) and Arts. 56–59 of the Geographical Indications of Goods (Registration and Protection) Rules, 2002 (available at http://www.wipo.int/wipolex/en/text.jsp?file_id=128113. Accessed 29 April 2015), require registration of authorized users, which only takes place after a comprehensive examination.

  24. Marie-Vivien (2010), p. 139.

  25. Article 336 EU-Colombia/Peru TA and Art. 14.16 of the Dispute Settlement Chapter of CETA contain very similar language; the EU-Korea FTA and the EU-Georgia AA, by contrast, do not include express exclusions of the direct effect.

    The half-sentence “unless otherwise provided in that party’s domestic legislation” can only be found in the EU-Central America AA. Semertzi points out that this language could suggest that if the domestic legislation grants international agreements direct effect, the AA should not run counter to that. However, she also clarifies that this reading is effectively blocked by the Council Decision preventing the direct invocation of the agreements before the EU and Member state courts, Semertzi (2014), p. 1131.

  26. Article 8 Council Decision of 16 September 2010 on the signing, on behalf of the European Union, and provisional application of the Free Trade Agreement between the European Union and its Member States, of the one part, and the Republic of Korea, of the other part, 2011 OJ L 127/1, Art. 7 Council Decision of 31 May 2012 on the signing, on behalf of the Union, and provisional application of the Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part, 2012 OJ L 354/3, Art. 7 Council Decision of 25 June 2012 on the signing, on behalf of the European Union, of the Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America on the other, and the provisional application of Part IV thereof concerning trade matters, 2012 OJ L 346/3 and Art. 6 Council Decision of 16 June 2014 on the signing, on behalf of the European Union, and provisional application of the Association Agreement between the European Union and the European Atomic Energy Community and their Member States, of the one part, and Georgia, of the other part, 2014 OJ L 261/1.

  27. For an in-depth analysis of the reasons behind this shift cf. Semertzi (2014) passim.

  28. E.g. Case 87/75 Conceria Daniele Bresciani v. Amministraziona Italiana delle Finanze 1976 ECR 129, para. 26 [Yaoundé Convention]; Case 17/81 Pabst & Richarz KG v. Haupzollamt Oldenburg 1982 ECR 1331, para. 27 [Association Agreement between the EEC and Greece]; Case C-432/92 R v. Minister of Agriculture, Fisheries and Food, ex parte Anastasiou (Pissouri) 1994 ECR I-3087, para. 27 [EEX-Cyprus Association Agreement]; Case C-469/93 Administrazione delle Finanze della Stato v. Chquita Italia SpA 1995 ECR I-4635, para. 41 [Lomé Conventions]. The CJEU assesses the direct applicability of international agreements in two steps. First, it looks at “the purpose, the spirit, the general scheme and the terms” of the agreement (Case 21-24/73 International Fruit Company v. Produktschap voor Groenten en Fruit 1972 ECR 1219, para. 20). Then, it asks if the provision in question “contains a clear and precise obligation which is not subject, in its implementation or effects, to the adoption of any subsequent measure” (Case 12/86 Meryem Demirel v. Stadt Schwäbisch Gmünd 1987 ECR 3719, para. 14, cf. also Case C-104/81 Hauptzollamt Mainz v. CA Kupferberg & Cie. KG aA 1982, ECR I-3641, para. 23.

  29. Cf. supra note 28.

  30. Semertzi (2014), p. 1135.

  31. Semertzi (2014), p. 1136.

  32. Article 5(1) EU-Korea FTA; Art. 5(1) EU-Andean Countries TA; Art. 5(1) EU-Central America AA; Art. 5(1) EU-Georgia AA.

  33. Article 5(2) EU-Korea FTA; Art. 5(2) EU-Andean Countries TA; Art. 5(2) EU-Central America AA; Art. 5(2) EU-Georgia AA.

  34. Cf. supra part 2 for a discussion of the objectives pursued by the EU through negotiating FTAs with GI protection chapters.

  35. Cf. infra part 4.2 for more detailed discussions of the FTA provisions dealing with the conflict of GIs and trademarks.

  36. And even if the public authorities may have obligations emanating from the Council Decisions, this does not automatically mean that the citizens are equally bound, see infra.

  37. Which is in fact, as far as the Member States are concerned, a matter of their internal law.

  38. Regulation (EC) No 882/2004 of the European Parliament and of the Council of 29 April 2004 on official controls performed to ensure the verification of compliance with feed and food law, animal health and animal welfare rules, OJ L 165/1. Unlike the Council Decisions discussed herein, the Quality Schemes Regulation at several occasions expressly refers to that regulation, ensuring some degree of certainty as to the relationship between those legal regimes.

  39. A different question is to what extent protection may be obtained by using laws against deceptive and misleading acts, in particular unfair competition law. These rules, however, apply independently from the protection determined by the FTAs.

  40. Adding to this, there is not even a central register where interested persons could search for GIs that enjoy protection under FTA or any other bilateral agreement.

  41. Cf. Correa (2007), p. 66 pointing out that such discriminations are “rare occasions”, thus making the implications of Art. 4 TRIPS much less significant than those of the national treatment clause.

  42. This is the case for the EU-Korea FTA and the EU-Central America AA.

  43. A good explanation of the situation can be found in UNCTAD-ICTSD (2005), pp. 301–302: “If Member A affords TRIPS-plus protection to a particular indication from Member B, it cannot simply extend the protection of this particular indication to Member C, because the protected good is not produced in C, and producers from C must not use the indication protected in B.392 Instead, Members A and C would have to agree, in bilateral negotiations, which particular geographical indication from Member C would enjoy, in Member A, a protection comparable to the one afforded to the indication from Member B.” Apart from that, the MFN clause requires MFN treatment for the nationals of all other WTO members. One could argue that granting protection to GIs for goods that may be marketed by nationals from any country could not be a violation of the MFN obligation. However, the close link to the geographical origin of a product means that at least indirectly the nationals of the country where the product originates from disproportionately benefit from the protection of the respective GI. Hence, the latter receive de facto an advantage, favour, or privilege nationals from other countries do not obtain.

  44. Cf. infra 4.2.3 and 4.2.5.

  45. Cf. infra 4.2.1.

  46. Gervais (2012), Art. 24, para. 2.318.

  47. Malbon et al. (2014), para. 24.01.

  48. For more on the discussions around Art. 24(1) and the opposing arguments cf. Rangnekar (2003), pp. 30 et sqq.

  49. Cf. supra part 2 for a discussion of the EU’s goals.

  50. In certain cases, it may be possible to argue that in the partner country a specific good identified by a geographic name has no reputation that could be linked to the geographical origin of that product. This would, if no other characteristics of that good are attributable to the origin, exclude a classification of that name as a GI.

  51. O’Connor and Richardson (2012), pp. 16–17.

  52. Article 208 EU-Colombia/Peru TA, Art. 245(1)(1) EU-Central America AA.

  53. Article 22.7.4 CETA and Art. 10.18(1) and (2) EU-Korea FTA. Article 10.18(6)(f) EU-Korea FTA prescribes in addition that each Party’s legal system must provide for an objection procedure; this, however, relates to cases where individual applications for protection are filed with the authorities of the country where protection is sought.

  54. European Commission, Notice – Geographical indications from the Republic of Korea, 2008 OJ C 141/33 and Information notice – geographical indications from the Republic of Korea, 2009 OJ C 84/14.

  55. E-mail from the DG AGRI to the author of 29 May 2015.

  56. For example, European Commission, Information Notice – Public Consultation, Geographical indications from Georgia, 2010 OJ C 50/6; Information Notice – Public Consultation, Geographical indications from Colombia and Peru, 2010 OJ C 103/20; Information Notice – Public Consultation, Geographical indications from Central American countries, 2012 OJ C 214/13 and most recently in preparation of Ecuador’s accession to the EU-Colombia/Peru TA Information Notice – Public Consultation, “Cacao Arriba” Geographical Indication from Ecuador, 2014 OJ C 246/9 and the notices mentioned in the preceding footnote.

  57. O’Connor and Richardson (2012), p. 18.

  58. Moreover, it should be noted that in the past there has been a number of GI-related agreements of the EU with third countries under which third country GIs received protection without any preceding objection procedure within the EU. This is true, for example, for the Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks, 1997 OJ L 152/16, the Agreement between the European Community and the Republic of South Africa on trade in wine, 2002 OJ L 28/4 and the Agreement establishing an association between the European Community and its Member States, of the one part, and the Republic of Chile, of the other part 2002 OJ L 352/3.

  59. Article 10.22(4) EU-Korea FTA, 212(2) EU-Colombia/Peru TA, 172(4) EU-Georgia AA, Chapter 22 Art. 7.4 CETA. Other provisions on homonymous names, such as names for plant varieties or animal breeds are due to space restrictions beyond the scope of this article.

  60. Although it could be argued that a GI becoming generic is one of the cases of a GI ceasing to be protected.

  61. Article 10.25(3)(b) EU-Korea FTA, Chapter 22 Art. 7.7 CETA.

  62. All FTAs cover agricultural products and foodstuffs. With the exception of CETA, they also cover wines and spirits and aromatised wines. The EU-Colombia/Peru TA contains in addition provisions on industrial and handicraft products.

  63. Directive 2004/48/EC of the European Parliament and of the Council of 29 April 2004 on the enforcement of intellectual property rights, 2004 OJ L 195/1.

  64. Cf. supra part 2.

  65. EU-Korea FTA: Working Group on Geographical Indications, Art. 10.24, 10.25; EU-Colombia/Peru TA: Subcommittee on Intellectual Property, Art. 213, 209, 257; EU-Central America AA: Association Council, Art. 247, 4-6; EU-Georgia AA: GI Sub-Committee, Art. 178, 179. CETA will establish a Joint Committee with a Committee on Trade in Goods, which will inter alia address intellectual property issues, one of its tasks will be amendments to the GI list, chapter 22 Art. 7.7.

  66. Notice concerning the provisional application of the Free Trade Agreement between the European Union and its Member States, of the one part, and the Republic of Korea, of the other part, 2011 OJ 168/1. Cf. Council Decision of 16 September 2010 on the signing, on behalf of the European Union, and provisional application of the Free Trade Agreement between the European Union and its Member States, of the one part, and the Republic of Korea, of the other part, 2011 OJ L127/1.

  67. Cf. Art. 244(2)(f) of the AA between the EU and Central America, where a publication is expressly required.

  68. Ensuring such a right of use is one of the main goals set by the EU for its GI-related trade negotiations, Cf. supra part 2.

  69. Which reads: “Geographical 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.”

  70. The situation is different under the EU-Colombia/Peru TA, cf. infra 4.2.2.

  71. Cf. the decision of the WTO Panel in EC – Trademarks and Geographical Indications (US) (2005), WT/DS174/R and (Australia) (2005) WT/DS290/R discussed supra in part 2.

  72. Cf. supra 4.1.1.

  73. Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised at Brussels on 14 December 1900, at Washington on 2 June 1911, at The Hague on 6 November 1925, at London on 2 June 1934, at Lisbon on 31 October 1958, and at Stockholm on 14 July 1967, and as amended on 28 September 1979.

  74. Cf. supra part 2.

  75. Cf. supra the beginning of this part 4.2.1.

  76. Cf. supra in this part 4.2.1 our discussion of the same issue in the context of selecting the GIs for the initial list of GIs.

  77. Article 10.67.

  78. Article 10 of the Paris Convention, which is incorporated into TRIPS by the latter’s Art. 2(1), prescribes the seizure of goods “in cases of direct or indirect use of a false indication of the source of the goods”.

  79. However, it should be noted that the EU Border Measures Regulation also lays down rather broad competencies of the customs authorities to seize and destroy goods that infringe on GI rights in any way set out by EU law.

  80. Cf. for a detailed discussion of the ownership problem Mantrov (2014), pp. 65 et sqq.

  81. Regulation (EU) No 608/2013 of the European Parliament and the Council of 12 June 2013 concerning customs enforcement of intellectual property rights and repealing Council Regulation (EC) No 1383/2003, OJ L 181/15. Cf. Art. 3(1) and (2), and in particular (1)(d) and (2)(b) referring to groups of producers, representatives of such groups, operators entitled to use a GI, and inspection bodies or authorities competent for the GI in question.

  82. Cf. Art. 3(1) and (2), and in particular (1)(d) and (2)(b) referring to groups of producers, representatives of such groups, operators entitled to use a GI, and inspection bodies or authorities competent for the GI in question.

  83. Which grants a right of use to “any operator marketing … products … conforming to the corresponding specification”.

  84. Cf. supra note 82.

  85. The Parties are, however, under the obligation to provide criminal sanctions for “wilful trademark counterfeiting and copyright and related rights piracy on a commercial scale” (Art. 10.54). This includes the obligation to criminalise aiding and abetting (Art. 10.56) and criminal liability of legal persons (Art. 10.57), going beyond Art. 61 TRIPS. Josef Drexl points out that the obligation to provide for criminal liability of legal person is “highly problematic from an internal EU perspective, given that there are jurisdictions within the EU, such as Germany, that do not recognise criminal liability of legal persons as a matter of principle.” Drexl (2012), pp. 9–10.

  86. The EU Commission’s Proposal for a European Parliament and Council Directive on criminal measures aimed at ensuring the enforcement of intellectual property rights, COM (2005) 276/1, 2006 OJ C 49/37, for example, faced heavy criticism – inter alia for constitutional reasons, such as a (perceived) lack of EU competency, the principle of subsidiarity, the principle of proportionality, and the conflict with fundamental rights – and was eventually withdrawn, 2010 OJ C 252/7. For a concise overview of several of the issues raised by this proposal cf. Hilty et al. (2006) passim.

  87. Article 10.23.

  88. Bolivia, Colombia, Ecuador, and Peru.

  89. Covarrubia (2011), p. 334.

  90. Notice concerning the provisional application between the European Union and Peru, of the Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part, 2013 OJ L 56/1 and Notice concerning the provisional application between the European Union and Colombia, of the Trade Agreement between the European Union and its Member States, of the one part, and Colombia and Peru, of the other part, 2013 OJ L 201/7.

  91. European Commission (2014).

  92. Cf. in particular Art. 207(d) but also the language employed in Art. 207(e) (“manufacturers and craftsmen”).

  93. Decision 486 of the Andean Community of 14 September 2000. An English version of the decision, albeit only in the version of 2000, is accessible at http://www.wipo.int/wipolex/en/details.jsp?id=9451. Last Accessed 28 April 2015. References to GIs for craft and industrial products can be found in Arts. 212 and 218 Decision 486. Both countries have additional regulations regarding GI protection. Colombia included GI provision in its Commercial Code and Peru provided for GI protection under Legislative Decree No. 1075, Covarrubia (2011), p. 333.

  94. Cf. also Art. 210(3), according to which the Parties must notify each other if a name ceases to be protected as a GI in its country of origin, and Art. 207(h), which guarantees that a name may not be treated as a generic or common designation, as long as it is protected as a GI in its country of origin.

  95. Cf. supra 4.2.1.

  96. Cf. infra 4.2.5.

  97. The definition can be found in Art. 207(a) and reads as follows: “… (a) geographical indications are, for the purposes of this Title, indications consisting of the name of a particular country, region or locality or a name which, without being that of a particular country, region or locality, refers to a particular geographical area, and which identify a product as originating therein where a given quality, reputation or other characteristic of the product is exclusively or essentially due to the geographical environment in which it is produced, with its inherent natural and human factors; …”.

  98. In the English version of the agreement there is a puzzling difference in the language used in the two paragraphs of Art. 208: While paragraph (1) speaks of GIs of the EU “which have been registered by the EU Party” [emphasis added], paragraph (2) refers to GIs of an Andean Country “which are registered by such Andean Country” [emphasis added]. This difference can be explained by a translation slip, as other versions of the agreement use the same language in both paragraphs.

  99. This approach was taken, for instance, by bilateral agreements concluded between Germany and a number of other states in the 1960s and 1970s. Examples are Arts. 2 and 3 Abkommen zwischen der Bundesrepublik Deutschland und der Französischen Republik über den Schutz von Herkunftsangaben, Ursprungsbezeichnungen und anderen geographischen Bezeichnungen, 1961 BGBl. II 22, Arts. 2 and 3 Abkommen zwischen der Bundesrepublik Deutschland und der Italienischen Republik über den Schutz von Herkunftsangaben, Ursprungsbezeichnungen und anderen geographischen Bezeichnungen, 1965 II 156 and Arts. 2(1) and 3(1) Abkommen zwischen der Bundesrepublik Deutschland und dem Spanischen Staat über den Schutz von Herkunftsangaben, Ursprungsbezeichnungen und anderen geographischen Bezeichnungen, 1972 BGBl. II 109. For a detailed analysis of this principle in the context of these agreements (albeit in German) cf. Streber (1994), pp. 75 et sqq. Also newer bilateral GI-focused agreements of the EU contain similar provisions, such as Art. 4(1) second indent and (2) second indent Agreement between the European Community and the United Mexican States on the mutual recognition and protection of designations for spirit drinks, 1997 OJ L 152/16 and Art. 13(1)(a) and 14(1)(a) Agreement between the European Community and Australia on trade in wine, 2009 OJ L 28/3 and OJ L 28/3.

  100. Cf. supra part 2.

  101. Regulation (EC) No 110/2008 of the European Parliament and of the Council of 15 January 2008 on the definition, description, presentation, labelling and the protection of geographical indications of spirit drinks and repealing Council Regulation (EEC) No 1576/89, OJ L 39/16.

  102. This provision reads: “A product specification referred to in this Section shall be that approved, including any amendments also approved, by the authorities of the Party in the territory of which the product originates.”

  103. Thus, it is probably not an infringement on the right in the name “Parmigiano Reggiano” to use the term “Parmesan”.

  104. Cf. ECJ, Case 16/83 Karl Prantl 1984 ECR 1299, which dealt with the ban on the use of Bocksbeutel bottles (bottles of a characteristic bulbous shape) for wines not originating from certain regions in Germany, which barred the import of certain Italian wines. Cf. also German Federal Supreme Court, 26 January 1979, Case No. I ZR 112/78, 1979 GRUR 415 – Cantil-Bottle, addressing the import of Portuguese wines in similar bottles.

  105. Whereas the former two regulations refer to a “trade mark's reputation and renown and the length of time it has been used” the latter has dropped the reference to the duration of usage, just as the agreement provision at hand.

  106. Cf. supra part 2. However, the Parties remain free, under the TA, to even cancel a prior trademark.

  107. Article 211(1) EU-Colombia/Peru TA.

  108. Article 10.23(2) EU-Korea FTA; Art. 248(1) footnote 2 EU-Central America AA; chapter 22 Art. 7.6(6) CETA, Art. 176(2) and (3) EU-Georgia AA, each referring to the date of the entry-into-force of the respective agreement or the addition of a GI to the protected list.

  109. Notices concerning the provisional application of Part IV (trade matters) of the Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America on the other (Nicaragua, Honduras, and Panama), 2013 OJ L 204/1.

  110. Notices concerning the provisional application of Part IV (trade matters) of the Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America on the other (Costa Rica and El Salvador), 2013 OJ L 257/1.

  111. Notice concerning the provisional application of Part IV (trade matters) of the Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America on the other (Guatemala), 2013 OJ L315/1.

  112. Cf. Engelhardt (2011), pp. 176 et sqq. on ways of interpreting the reference to the protection in the country of origin in Art. 24(5) and (9) TRIPS.

  113. Cf. supra 4.2.1.

  114. The decision was approved by the EU by the Council Decision of 24 June 2014 on the position to be adopted on behalf of the European Union within the Association Council set up by the Agreement establishing an Association between the European Union and its Member States, on the one hand, and Central America, on the other, as regards the adoption of a decision by the Association Council on the inclusion in Annex XVIII of the respective geographical indications protected in the territory of the parties, 2014 OJ L 197/66.

  115. Sentence 2 of Art. 253 reads: “If a Republic of the CA Party has not fulfilled such requirements, this Agreement shall not enter into force in accordance with paragraph (2) or shall not be applied in accordance with paragraph (4) between the EU Party and such noncompliant Republic of the CA Party, until those requirements have been fulfilled.”

  116. Cf. CentralAmericaData.com (2013) stating that Italy made its approval of the provisional entry into force in 2013 contingent on the protection of the GIs “Provolone Valpadana”, “Fontina”, “Gorgonzola” and “Parmigiano Reggiano”.

  117. Cf. supra 4.2.1.

  118. Article 248(2) EU-Central America AA.

  119. Article 248(1) EU-Central America AA.

  120. Footnote 2 to Art. 248 EU-Central America AA.

  121. Cf. supra part 2.

  122. Notice concerning the provisional application of the Association Agreement between the European Union and the European Atomic Energy Community and their Member States, of the one part, and Georgia, of the other part, 2014 OJ L 259/1.

  123. Agreement between the European Union and Georgia on protection of geographical indications of agricultural products and foodstuffs, signed on 14 July 2011, entered into force on 1 April 2012, Notice concerning the entry into force of the Agreement between the European Union and Georgia on protection of geographical indications of agricultural products and foodstuffs, 2012 OJ L 164/1.

  124. Article 423(3) EU-Georgia AA.

  125. Even if the list aims at mirroring the GIs protected under EU regimes, the EU list is limited to GIs from EU member states and does not include any GIs from third countries that are registered under EU law.

  126. Annex XVII-B.

  127. Article 174.

  128. Article 175.

  129. Article 176(4).

  130. Article 176(1)–(3).

  131. Agreement between the European Community and Canada on trade in wines and spirit drinks of 16 September 2003, 2004 OJ L 35/1.

  132. Which in turn are defined using the terminology of the International Convention on the harmonized commodity, description and coding system done at Brussels on 14 June 1983.

  133. Cf. for example Art. 7(2)(a)(ii), (b)(ii) of the Agreement between the European Community and the Republic of South Africa on trade in wine, 2002 OJ L 28/4, and Art. 13(1)(a)(II.), (b)(II.) of the Agreement between the European Community and Australia on trade in wine, 2009 OJ L 28/3.

  134. The EU-Korea FTA provide for the inclusion of GIs into the border measure regime as well. Cf. supra 4.2.1.

  135. Cf. supra 4.2.1.

  136. Cf. supra 4.2.1.

  137. It has been reported that Canada had alleged 36 conflicts of EU GIs with prior forms of use of those names in Canada. 15 were conflicts with generic names (such as “Roquefort”, “Feta”, “Asiago” and “Fontina”), and eight conflicts with registered trademarks (such as “Prosciutto di Parma”, “Prosciutto di S. Daniele”, “Prosciutto Toscano” and “Gorgonzola”), Viju (2013), p. 4.

  138. The terms exempted are “Valencia Orange”, “Black Forest Ham”, “Tiroler Bacon”, “Parmesan”, “Bavarian Beer”, “Munich Beer”, “St. George Cheese”.

  139. Cf. supra part 2 for a brief discussion of the GI-related EU objectives of its bilateral trade talks.

  140. Cf. O’Connor (2015), p. 13 et sqq. who opines that the EU should insist on receiving in the US sui generis protection for its GIs.

  141. Cf. Viju (2013), pp. 5–6.

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    Tim Engelhardt (Dr., LL.M. (Columbia); Rechtsanwalt, Attorney-at-Law (NY)

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Engelhardt, T. Geographical Indications Under Recent EU Trade Agreements. IIC 46, 781–818 (2015). https://doi.org/10.1007/s40319-015-0391-3

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