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

This language precludes any member of TRIPS from adhering to the requirements of Articles 22 through 24 where a geographical indication of another state is considered generic in the member's state. (139) In this way, Article 24(6) arguably goes beyond simply preventing creation of future generic terms and seemingly creates an exception as large as the substantive rights provided under Articles 22 through 24. (140) One commentator states:

This final exception is so expansive that it virtually

eliminates any practical effect on American commercial

practice or on the operation of American law.

"Champagne" and "port" are precisely the types of

geographical indications that are "identical with the

term[s] customary in common language as the common

name[s]" of wines, cheeses, and other foods in the

United States. Within the United States, the BATF, the

Patent and Trademark Office, and the Federal Circuit

have all concluded that "Chablis" is a more or less

generic name for a white wine with certain

characteristics. Nothing in TRIPS requires American

legal institutions to revisit or rethink this conclusion. (141)

This exception is broadened further by the fact that each member state is seemingly vested with the authority to determine, according to its own laws, whether a geographical indication has become generic. (142)

The second portion of the Article 24(6) exception pertains to geographical indications that share a name with a grape variety. (143) An example that fits this exception is the term "Riesling," which refers to both the light, sweet wine of the Alsace region of Germany as well as the particular grape used to produce this wine. (144) The caveat to this exception, however, is that in order to continue using the geographical indication, the grape variety must have existed "in the territory of that Member as of the date of entry into force of the WTO Agreement." (145)

c. Articles 22 and 23: Restricting Trademarks Containing Geographical Indications

In addition to preventing geographical indications from becoming generic, the geographical indication portion of the TRIPS agreement aims to preclude the future registration of terms of origin as trademarks. (146) This is achieved through two substantive provisions: Article 22(3), which concerns geographical indications for any good, and Article 23(2), which refers to geographical indications for wine and spirits specifically. (147) While the two subsections are similar in language, they differ in so far as Article 22(3) adds a barrier not provided for in Article 23(2): (148) under Article 22(3), a member seeking to prevent the creation of a trademark containing a geographical indication must also prove (in addition to the presence of a geographical indication) that the term "is of such a nature as to mislead the public as to the true place of origin." (149) By contrast, Article 23(2) places a blanket prohibition on any trademark "which contains or consists of a geographical indication identifying wines or ... spirits...." (150)

Article 24(5) provides two exceptions to Articles 23(2) and 23(3). (151) As a preliminary issue, trademarks that contain geographical indications are permitted as long as the mark "has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith." (152) The term "good faith" is not defined by the agreement but is commonly thought to mean the party seeking the trademark "did not (and was not required to) know of the rights of other parties." (153) The exception only applies if the registration for the trademark occurred under subsection (a) prior to the implementation of the TRIPS agreement or (b) before the term of origin was protected in its original country. (154) While subsection (a) is fairly straight-forward, subsection (b) gives rise to policy questions insofar as it provides an "advantage to the countries which have long recognized geographical indications." (155) In sum, while consistent with the model of grandfathering in previous developments concerning geographical indications, TRIPS's exceptions for the registration of trademarks containing terms of origin are considerably narrower than their counterparts in the dilution-prevention realm. (156)

As the most recent international accord regarding geographical indications, the TRIPS agreement has served as an important starting point in the latest bilateral negotiations between the European Community and the United States. (157) Articles 22 through 24 express consensus between the two parties on the basic premise that the consumer should receive product information, which is neither confusing nor misleading. (158) However, regarding geographical indications for wine and spirits specifically, the exception clauses, Articles 24(5) and 24(6), reflect the parties' continued differences about whether such terms of origin deserve special treatment. (159) Further, the grandfather clauses embedded in the text are an acknowledgement that TRIPS cannot undo what has already been done. (160) Instead, as exemplified by Article 23(4), which promises future negotiations regarding an international registration system, (161) a comprehensive agreement was postponed. Finally, and perhaps most important as far as the shape of the bilateral agreement between the United States and the European Community is concerned, the ambivalence of Articles 22 through 24 reflects the fact that this portion of TRIPS was itself a concession by the United States in order to gain European buy-in for the larger agreement on intellectual property rights. (162) American disinterest for protection of geographical indications has continued in subsequent bilateral talks with the European Community. (163)

D. United States and European Community Bilateral Wine Accords

Bilateral negotiations between the United State and the European Community concerning the trade in wine have been marked by aggressive bargaining tactics and an unwillingness to find a middle ground. (164) The Wine Agreement constitutes the first major movement between the two sides in over two decades. (165)

1. The Wine Accord of 1983

Prior to the Wine Agreement of September 2005, wine trade between he United States and the European Community was governed by an accord dating back to 1983 (the Accord). (166) The Accord was embodied in a letter written by John M. Walker, Jr., Assistant Secretary of the U.S. Treasury Department addressed to Mr. Leslie Fielding, Director-General for External Relations for the European Community. (167) The primary purpose of the Accord was to enable increased importation of American wine into the European Community. (168) The majority of the agreement focused on the European Community's willingness to allow the importation of American wines that had been treated with certain approved substances. (169) In addition, the Accord confirmed that the European Community would reexamine import certification requirements and potentially adapt them to ensure they met U.S. certification requirements for wines intended to be exported to the European Community. (170) Further, the Accord contained an agreement to enter into technical negotiations concerning wine labeling requirements, as well as a statement of mutual understanding on the need to collaborate in future investigations of the wine sector. (171) Finally, the Accord briefly touched on the issue of geographic indications. (172) Specifically, the European Community recognized American viticultural areas. (173) In return, the United States agreed to undertake efforts "to prevent erosion of non-generic designations of geographic significance indicating a winegrowing area in the [European Economic Community]." (174) Although the Accord was originally designed to expire in 1988, (175) it was continually extended in varying increments until 2005.

2. Temporary Extensions and an Escalating "Wine War"

From 1988 to 1998, through a series of one-year extensions, the European Community temporarily extended the terms of the Accord, thus providing only short-term acceptance of American winemaking practices. (176) In 1998, the Council of the European Union agreed to a five year extension of the Accord in return for American promises to enter into formal negotiations on wine issues beginning in 1999. (177) These issues included: efforts by the United States to curtail the use of semi-generic names, European acceptance of United States winemaking practices, and the reduction in European tariffs due to the wide trade gap between the two parties. (178) Still unable to arrive at an agreement, on December 17, 2003, the Accord was once again extended, this time until December 31, 2005. (179)

Tensions between the two sides heightened considerably during recent years. (180) In October 2002, the House passed the Miscellaneous Trade and Technical Corrections Act of 2002 which increased pressure on the European Community to come to an agreement. (181) Section 2003 of this legislation would have required American importers to comply with onerous certification requirements for every bottle of wine brought into the country. (182) The bill's supporters sought to encourage the European Community to drop wine certification requirements on American bottles and instead become part of a treaty, joined by the United States, Australia, and Argentina, in which the signatories unequivocally accepted each other's winemaking practices and dropped the need for certification. (183) This bill eventually died in committee. (184)