No more whining about geographical indications: assessing the 2005 agreement between the United States and the European community on the trade in wine.

With respect to the identification of geographical origin, BATF separates such names into three different classes: generic, semi-generic, and nongeneric. (88) A geographical indication is deemed "generic" if the name, while "originally having geographical significance," now merely designates a "class or type of wine." (89) Examples include Vermouth and Sake. (90) Semi-generic names are those which currently have "geographical significance" but also designate "a class or type of wine." (91) The use of semi-generic names is limited when the wine is produced from a region other than that indicated by the name; in such a case, the label must designate the wine's true place of origin, and the wine itself must reflect the qualities typically associated with the semi-generic name. (92) Under the BATF's regulations, semi-generic names include Chablis, Champagne, Chianti, and Port. (93) Finally, nongeneric names can be subdivided into two categories. (94) First, names which BATF has found to be neither generic nor semi-generic can only be used "to designate wines of the origin indicated by such name." (95) Examples within this category include American, California, French, and Spanish. (96) Second, nongeneric names become "distinctive designations" when they are "known to the consumer and to the trade as the designation of a specific wine of a particular place or region, distinguishable from all other wines." (97) Names within this final category include Bordeaux Rouge, Graves, Medoc, and Rhone. (98)

2. 26 U.S.C. [section] 5388: Codification of Semi-Generics

In 26 U.S.C. [section] 5388, Congress codified the segment of the BATF wine regulations dealing with semi-generics. (99) This section provides that "[s]emi-generic designations may be used to designate wines of an origin other than that indicated by such name" under the same conditions as those set out in the BATF regulations. (l00) Accordingly, the wine producer must indicate the "appropriate appellation of origin disclosing the true place of origin," and the product must meet expected standards for wine produced in the geographic region identified by the semi-generic name. (101) While Section 4.24(b)(2) of the BATF regulations merely provides "examples of semi-generic names," (102) 26 U.S.C. [section] 5388 specifically identifies seventeen geographical indications to be treated as semi-generic names. (103) Most notably, Burgundy, Chablis, Champagne, Chianti, Port, and Sherry are deemed semi-generic. (104)

This piece of legislation was included in the Taxpayer Relief Act of 1997 in response to persistent lobbying from the American wine industry. (105) The lobbyists, which include both individual wineries and wine associations, have supported their position by arguing that consumers rely on semi-generic names to make informed purchases. (106) As a result of this legislation, it is "more difficult for the U.S. Trade Representative to 'trade away' the semi-generic names in trade discussions with the European Union." (107)

C. International Cooperation for the Protection of Geographical Indications

1. Early International Agreements

The movement to arrive at an international agreement for the protection of geographical indications was initiated by the Europeans in the late nineteenth century. (l08) The Paris Convention for the Protection of Industrial Property of 1883 was the first foray into international protection for geographical indications. (109) This convention achieved a large number of signatories, including the United States, due in part to an agenda that was limited in its protection of geographical indications. (110) The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (Madrid Agreement), signed in 1891, initiated stricter measures that sought to "prevent the dilution of geographical indications into generic terms." (111) Consequently, this agreement achieved far fewer signatories than the Paris Convention; the United States balked at joining this agreement. (112)

The most recent of these early efforts, still in effect today, is the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration (Lisbon Agreement). (113) Ratified in 1958, this accord went beyond the Madrid Agreement in its attempt to protect geographical indications. (114) For example, Article 3 of the Lisbon Agreement prohibits the misuse of a term of origin "even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as 'kind,' 'type,' 'make,' 'imitation,' or the like." (115) The most important aspect of this agreement is Article 5, which created an international registration system for the identification and protection of terms designating a product's place of origin. (116) The harsh terms of the Lisbon Agreement resulted in a dearth of signatories. (117) The United States did not sign this agreement either. (118)

2. Trade-Related Aspects of Intellectual Property Rights

The first comprehensive and widely supported international agreement on the protection of intellectual property rights was forged during the World Trade Organization's (WTO) Uruguay Round of the General Agreement on Tariffs and Trade (GATT) negotiations. (119) The resulting agreement, TRIPS, came at the urging of the United States, which sought greater international respect for intellectual property. (120) However, while the United States was the driving force behind TRIPS, the inclusion of provisions concerning geographical indications, Articles 22 through 24, was "essentially due to the persistent endeavors of the [European Community] and Switzerland...." (121)

TRIPS has two distinguishing characteristics when compared to the previous international accords on geographical indications discussed above: first, the detailed provisions concerning the enforcement of TRIPS that "promise that protection will be more effective than under any of the previous agreements," and second, the sheer number of signatories to TRIPS. (122) By its terms, the portion of TRIPS concerned with geographical indications has three primary aims: (1) eliminating the use of false or misleading geographical indications in order to protect the consumer and eliminate unfair competition; (2) precluding, with some exceptions, the "registrability of geographical indications as trademarks;" and (3) preventing geographic terms from becoming generic, (123) The guiding principle throughout this portion of TRIPS is to implement new, substantive standards for protecting geographical indications while sanctioning past developments through the use of exceptions and grandfather clauses. (124)

a. Article 22: The Basic Tenets

Article 22 of TRIPS sets forth the tenets for the international protection of geographical indications. (125) First, Article 22(1) defines geographical indications as "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." (126) Second, Article 22 also presents a two-pronged rationale for protecting geographical indications. (127) Article 22(2) enables interested parties to prevent use of these terms where such use is "in a manner which misleads the public" or which "constitutes an act of unfair competition" as defined by the Paris Convention. (128)

b. Article 23: Preventing a Lapse into Generic

Article 23 of TRIPS concerns the protection of geographical indications for wines and spirits specifically. (129) The principal aim of this section is to prevent geographical indications identifying wines from becoming generic terms. (130) It is often quite difficult to determine when a term designating a place of origin has become generic. (131)

When the geographical name is so widely used that the public comes to understand it as the name for a category of all the products of the same type but not necessarily of a certain origin, the name is not and cannot be protected anymore as a geographical indication. "Moutarde de Dijon" is one example of a geographical name that has become generic throughout the world. (132)

Accordingly, to avoid messy determinations about whether a geographical term is generic and to prevent this transformation altogether, TRIPS prospectively precludes such conversion through two subsections in Article 23. (133) Article 23(1) eliminates the potential for weakening the meaning of geographical indication in the minds of consumers by prohibiting use of adjoining terms such as "kind," "type," or "style" along with a geographical indication that is not the wine's true place of origin. (134) This subsection precludes such wine labeling practices even where the label displays the wine's true place of origin. (135) Article 23(2) provides for signatories to refuse or invalidate a trademark for wines or spirits which "contains or consists of a geographical indication." (136)

Exemplifying TRIPS's practice of grandfathering in past developments of geographical indications, Article 24(6) provides two broad exceptions to Articles 23(1) and (2). (137) The first portion of Article 24(6) provides:

Nothing in this Section shall require a Member to apply

its provisions in respect of a geographical indication of

any other Member with respect to goods or services for

which the relevant indication is identical with the term

customary in common language as the common name

for such goods or services in the territory of that

Member. (138)