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

(72.) Lindquist, supra note 67, at 320.

(73.) Council Regulation 2392/89, Laying Down General Rules for the Description and Presentation of Wines and Grape Musts, 1989 O.J. (L 232) 13 [hereinafter Council Reg. 2392/89].

(74.) Id. art. 1(1)(b); see id. art. 4 (concerning regulation of the use of geographical indications for wines produced by member states).

(75.) Id. art. 40(1).

(76.) Id. art. 26(1)(a).

(77.) Id. art. 29(1)(a).

(78.) Id. art. 29(2).

(79.) See id. art. 28(1) ("Only the information specified in Articles 25, 26 and 27 shall be allowed for the description on the labeling of products originating in third countries."). Thus, a California winemaker who designates his product as "Bordeaux style" would be precluded from selling his wine in the European Community. As a concession to products in violation of this Regulation that have a U.S. trademark, the owner of a U.S. trademark was permitted to continue to use the trademark until December 31, 2002. Id. art. 40(3).

(80.) TRIPS, supra note 7, [section] 3.

(81.) See Goldberg, supra note 5, at 141-42 n.195 (asserting that the Council Regulation "is significant because of the corresponding subject matter in Articles 23 and 24 of TRIPS"). The TRIPS agreement will be discussed in greater detail. See infra Part II.C.2.

(82.) See 27 C.F.R. [section] 4.1 (2006) (giving a general overview of [section] 4, which promulgates rules for the labeling and advertising of wine).

(83.) See Lindquist, supra note 67, at 313.

(84.) Id.

(85.) Id.

(86.) Id.

(87.) Id.

(88.) 27 C.F.R. [section] 4.24.

(89.) Id. [section] 4.24(a)(1)-(2).

(90.) Id. [section] 4.24(a)(2).

(91.) Id. [section] 4.24(b)(1).

(92.) Id.

(93.) Id. [section] 4.24(b)(2). American tolerance of such terms brings it into direct conflict with Council Reg. 2392/89, which unequivocally forbids the use of "the name of a given region in the Community" on the label of an imported wine. Council Reg. 2392/89, supra note 73, art. 29(2).

(94.) 27 C.F.R. [section] 4.24(c).

(95.) Id. [section] 4.24(c)(1).

(96.) Id. [section] 4.24(c)(2).

(97.) Id. [section] 4.24(c)(1).

(98.) Id. [section] 4.24(c)(3).

(99.) Lindquist, supra note 67, at 327.

(100.) 26 U.S.C.A. [section] 5388(c)(1) (West 2006).

(101.) Id.

(102.) See 27 C.F.R. [section] 4.24.

(103.) 26 U.S.C.A. [section] 5388(c)(2)(B).

(104.) Id.

(105.) Lindquist, supra note 67, at 327. The Wine Institute is arguably the American Wine Industry's most powerful political voice. See, e.g., Press Release, Wine Institute, Wine Institute Encourages Developing "California Message" (Jan. 23, 2006), http://winebusiness.com/news/DailyNewsArticle.cfm?dataId=41304 (stating that the "Wine Institute is the association of 887 California wineries and affiliated businesses whose members account for 85% of U.S. wine production").

(106.) Lindquist, supra note 67, at 327-28.

(107.) Id. at 329.

(108.) See id. at 314.

(109.) Goldberg, supra note 5, at 112.

(110.) Id.

(111.) Id. at 113.

(112.) Id.

(113.) Lindquist, supra note 67, at 315; Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, Oct. 31, 1958, http://www.wipo.int/lisbon/erglegal_texts/lisbon_agreement.htm [hereinafter Lisbon Agreement].

(114.) Goldberg, supra note 5, at 114; see also Albrecht Conrad, The Protection of Geographical Indications in the TRIPS Agreement, 86 TRADEMARK REP. 11, 25-26 (1996) (stating that the Lisbon Agreement's "focus is not restricted to border measures, as in the Paris Convention or the Madrid Agreement, but also includes adoption of a registration system comparable to that of trademarks....").

(115.) Lisbon Agreement, supra note 113, art. 3.

(116.) Id. art. 5; see Goldberg, supra note 5, at 114.

(117.) Goldberg, supra note 5, at 115.

(118.) Id.

(119.) Id. at 116.

(120.) Lindquist, supra note 67, at 315.

(121.) Conrad, supra note 114, at 29-30. The willingness to include protection for geographical indications within TRIPS was a central bargaining chip for the United States in its negotiations with the European Community, as the United States "has virtually no commercially valuable appellations of origin and therefore nothing to gain from joining specific international agreements" concerning protection of places of origin. Chen, supra note 12, at 55.

(122.) Conrad, supra note 114, at 31. The signatories to TRIPS include all 149 members of the World Trade Organization (WTO). Goldberg, supra note 5, at 116; see also World Trade Organization, Understanding the WTO: The Organization, http://www.wto.org/english]thewto_e/whatis_e/tif_e/org6_e.htm (last visited Mar. 25, 2007) (indicating that the WTO's membership was 150 as of Jan. 11, 2007).

(123.) Conrad, supra note 114, at 44-45.

(124.) See id. at 43. In addition, in consideration of the failures of the Madrid Agreement but with an eye to the future, Article 23(4) of TRIPS demands subsequent

negotiations for "the establishment of a multilateral system of notification and registration of geographical indications for wines." TRIPS, supra note 7, art. 23(4).

(125.) TRIPS, supra note 7, art. 22.

(126.) Id. art. 22(1).

(127.) Conrad, supra note 114, at 34.

(128.) TRIPS, supra note 7, art. 22(2). The United States opposed including the provision concerning "unfair competition." Conrad, supra note 114, at 34.

(129.) TRIPS, supra note 7, art. 23.

(130.) Conrad, supra note 114, at 38-39.

(131.) Id. at 12.

(132.) Id.

(133.) Id. at 39.

(134.) See TRIPS, supra note 7, art. 23(1).

(135.) Id.

(136.) Id. art. 23(2). A third approach to preventing geographical indications from becoming generic, not adopted by TRIPS, is legally prohibiting "the conversion of geographical names into generic terms." Conrad, supra note 114, at 39. This approach was proposed in the European Community draft but never incorporated into the final document. Id.

(137.) Id. at 39-40.

(138.) TRIPS, supra note 7, art. 24(6) (emphasis added). An additional exception under Article 24(4) permits the continued use of a geographical indication that refers to a term of origin found within another member where such use had occurred continuously for ten years prior to April 15, 1994, or for any time preceding the date if done in good faith. Id. art. 24(4). This is "tantamount to an acknowledgment that TRIP[S] does not and cannot reverse past developments in the field." Conrad, supra note 114, at 43.

(139.) Id. at 39-40.

(140.) Chen, supra note 12, at 57.

(141.) Id.

(142.) See id. ("[N]othing in TRIPS indicates that this determination, effectively a legal ruling that a geographical indication has become generic in a particular jurisdiction, should be performed outside a member state's courts or by reference to any law other than that of the member state.").

(143.) TRIPS, supra note 7, art. 24(6).

(144.) Conrad, supra note 114, at 40. As a testament to the permitted use of the term Riesling among TRIPS signatories, the Author can personally confirm the emergence of many excellent Rieslings from such New World producers as California, Oregon, Australia, and South Africa.

(145.) TRIPS, supra note 7, art. 24(6).

(146.) Conrad, supra note 114, at 41.

(147.) See TRIPS, supra note 7, arts. 22(3), 23(2). In response to these provisions, "the United States amended its trademark law, effective Jan. 1, 1996, to comply with [these] provisions of TRIPS." Lindquist, supra note 67, at 324. Accordingly, the Trademark Office will not award a mark consisting of a "geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods." 15 U.S.C.A. [section] 1052(a) (West 2006). Still, this does not prevent an American wine producer from using a semi-generic term in compliance with 26 U.S.C. [section] 5388; it only precludes trademark protection for such use. See 26 U.S.C.A. [section] 5388(c)(1) (West 2006) ("Semi-generic designations may be used to designate wines of an origin other than that indicated by such name....").

(148.) Conrad, supra note 114, at 41.

(149.) TRIPS, supra note 7, art. 22(3).

(150.) Id. art. 23(2). The variance in Articles 22(3) and 23(2) represents a compromise between the European Community and a coalition consisting of the United States, Canada, and Australia. Paul Demaret, The Metamorphoses of the GATT: From the Havana Charter to the World Trade Organization, 34 COLUM. J. TRANSNAT'L L. 123, 166 (1995); accord Conrad, supra note 114, at 41 (acknowledging that the agreement "is a compromise between the two concepts"). Article 22(3), which requires a showing of consumer confusion to prevent issuance of the mark, expresses the American philosophy on trademark law "where registration as a trademark is possible if the geographical name has acquired 'secondary meaning,' i.e., does not denote merely the origin of the product but also identifies a single business source." Id. On the other hand, with respect to wine and spirits, the agreement adopts the European philosophy of a distinction between geographical indications and the law of trademarks. Id.

(151.) See TRIPS. supra note 7, art. 24(5).

(152.) Id.

(153.) Conrad, supra note 114, at 41. This interpretation of "good faith" makes the scope of the exception "considerably smaller, because a geographical name is rarely used without knowledge of its origin." Id.