Geography Reference
In-Depth Information
2.51
In
EC - Trademarks and Geographical Indications
the Panel found that the scope
of Art 24.3 was limited to the implementation of section 3 of Part II of the
TRIPS Agreement on geographical indications, and did not apply to the
implementation of section 2 of Part II on trade marks.
16
The Panel interpreted the phrase 'the protection of geographical indications
that existed in that Member immediately prior to the date of entry into force of
the WTO Agreement' to mean the state of protection of individual GIs
immediately prior to 1 January 1995.
17
2.52
2. Geographical indications and trade marks
Given the novelty of GIs protection for some countries, compared with their
more long-standing protection of registered trade marks, the GIs provisions of
the TRIPS Agreement seek to reconcile the two systems of protection. In
EC -
Trademarks and Geographical Indications
the Panel recognised that the rights
provided for in Art 22.2 and Art 16.1, concerned with trade mark protection,
could lead to a conflict between private parties but it considered that the treaty
provisions themselves did not conflict.
18
2.53
(a) Refusal or invalidation of the registration of a trade mark comprising a
geographical indication
Article 22.3 of the TRIPS Agreement provides for
ex officio
action by a WTO
Member or, if its legislation permits or at the request of an interested party,
refusal or invalidation of the registration of a trade mark which contains or
consists of a GI with respect to goods not originating in the territory indicated,
if use of the indication in the trade mark for such goods in that Member is of
such a nature as to mislead the public as to the true place of origin. In
EC -
Trademarks and Geographical Indications
the Panel confined Art 22.3 to the
resolution of conflicts between GIs and later trade marks, but not prior trade
marks.
19
2.54
(b) Refusal or invalidation of a trade mark containing a false representation of
origin
Additionally, Art 22.4 provides that the protection under paras 1, 2 and 3 of Art
22 shall be applicable against a geographical indication which, although literally
2.55
16
Panel Reports,
EC - Trademarks and Geographical Indications (US)
, paras 7.631-7.632, and
(Australia)
, paras
7.631-7.632.
17
Panel Reports,
EC - Trademarks and Geographical Indications (US)
, para 7.636, and
(Australia)
, para 7.636.
18
Panel Reports,
EC - Trademarks and Geographical Indications (US)
, paras 7.623-7.624, and
(Australia)
, paras
7.623-7.624.
19
Panel Reports,
EC - Trademarks and Geographical Indications (US)
, para 7.622, and
(Australia)
, para 7.622.
