World Trade Organization (WTO) Rules Against European Union in Geographic Indication Case

The new precedents set by the WTO regarding Geographic Indications (GI) will likely have an effect on both Russia and Ukraine's IP regimes. The highly anticipated WTO Panel Report issued earlier this year concluded that the relationship between trademarks and geographic indications must recognize priority, exclusivity and territoriality.

Russia is under pressure from the US to improve its IP regime in particular prior to joining the WTO, and the new requirements for Gis may come up during the bilateral Intellectual Property Working Group meetings to be held 13-14 October. In both Russia and Ukraine, the relevant amendments required to bring both countries' laws into accordance with the decision have already been drafted and are expected to be considered by the Government before the end of the year.

The ruling originated from a complaint brought against the European Union (EU) by the U.S. and Australia. The WTO panel ruled that the EU's regulations regarding geographic indications was not in compliance with its TRIPS obligations.

The core question the WTO panel had to answer was whether a prior trademark not only continued to enjoy protection if later on a confusing similar GI was registered, but also whether the trademark would be enforceable against such a later GI. The EU provisions under question made this doubtful.

The WTO Panel strongly endorsed the exclusivity of the prior trademark registration under the TRIPS Agreement. Where there is a relatively high likelihood of confusion between prior trademarks and a later GI, the GI must be refused and its use can be blocked by the trademark owner.

The ruling was momentous for trademark owners such as CIPR member Anheuser-Busch. The U.S. brewer has sought to protect its world-renowned trademark against a state-owned Czech brewery, Budejovicky Budvar, over the "Budweiser," or "Bud" name. The company began using the name Budweiser.

"The recent decision by the World Trade Organization is an important victory for Anheuser-Busch," Stephen Burrows, chief executive of the brewer's international unit, said in a statement. "[The WTO decision] halts Budejovicky Budvar's efforts to rely on this registration of "Budejovicke pivo" to justify its use of the Budweiser."

Peter Necarsulmer, CIPR President noted, "We hope that countries revising their trademark laws will take note of the WTO Panels' message and base their national law on priority, exclusivity and territoriality and provide for the refusal of a GI if it is confusingly similar to a prior trademark. This is the only way to ensure compatibility with the TRIPS agreement."

Published by the Coalition for Intellectual Property Rights
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The Coalition for Intellectual Property Rights (CIPR) is a private-public partnership dedicated solely to protecting and enforcing intellectual property rights in the CIS countries and the Baltic States. Through legislative initiatives and lobbying, coalition building, enforcement actions, public awareness, and opinion and economic research, CIPR assists governments and IP owners to establish transparent IPR regimes that adhere to international standards. For additional information, please visit the CIPR website at www.cipr.org or contact CIPR's Washington, DC or Moscow offices at +1 202 466-6210 (U.S.), or +7-095-775-0077 (Russia).