Citation: 87 J. Pat. & Trademark Off. Soc'y 31 2005
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Apples and Oranges (and Wine):
Why the International Conversation
Regarding Geographic Indications is
at a Standstill
Molly Torsen
As the individual regions and cities of the world begin to share more
and more commercial similarities, such as ubiquitous "chain" stores
and restaurants, it is natural that some consumers will strive to find
products and foodstuffs that are somehow singular or are noted for their
quality or rarity. On one level, trademark law protects products that have
attained a certain reputation for just such qualities, but when the
uniqueness of a region or the attributes of a certain geographic area are
responsible for the special traits of a product, the tangential concept of
geographic indications governs. Trademark law provides a consumer
with the ability to choose between Chateau Ste. Michelle and Columbia
Winery wines, trusting that the label of each indicates a certain level of
quality based on that consumer's experience or knowledge of those
brands. Geographic indications enable a consumer to choose between a
Bordeaux and a Chianti with some assurance that he or she knows what
those wines are.
The law and policies of geographical indications hold the potential
of "re-linking production to the social, cultural and environmental
aspects of particular places, further distinguishing them from anonymous
mass produced goods, and opening the possibility of increased
responsibility to place."' Both Bordeaux and Chianti are regions in
Europe; Bordeaux is in France and Chianti is in Italy. That their names
have come to signify types of red wine is something that Europeans and
Americans, in particular, are struggling to regulate, qualify and quantify.
I Elizabeth Barham, Translatingterroir:the globalchallenge ofFrenchAOC labeling,JOURNAL OF
RURAL STUDIES 19 (2003) 127-138, 129.
It is not necessarily seen as a struggle between developed and developing
countries, but rather a friction between the sensibilities of the 'Old
World' and the new,2 as well as an ideological schism between different
national perspectives in other realms of law, such as antitrust; some
jurisdictions favor consumer protection over producer protection. This
article will explore the friction in GI law through several examples, most
prominent of which will be the current strain between France and the
United States in the realm of wines and spirits. The debate is by no
means limited to this narrow genre of goods nor to these two countries,
but their opposite approaches to geographical indications and some
current events regarding this particular conflict provide a useful
overview of the issue. The lack of agreement about the importance and
strength of geographic indications [hereinafter GIs] stalls advancement
in other areas of intellectual property law, such as the Uniform Domain
Name Dispute Resolution Policy,3 an online procedure for resolving
complaints made by trademark owners regarding domain names, which
demonstrates the need for consensus on this issue. After a preliminary
look at the situations in France and the United States, this writing will
attempt a bird's-eye view of the international positions on GIs, then
address the goals and actualities of treaties that address GIs on an
international level and analyze how various jurisdictions are struggling
with dissimilar aspects of their respective current systems.
I. A FRAMEWORK FOR AND BRIEF HISTORY OF GEOGRAPHIC INDICATIONS
Geographicallydescriptivetrademark. A trademark that uses a geographic name to
indicate where the goods are grown or manufactured. This type of mark is
protected at common law, and can be registered only on proof that it has acquired
distinctiveness over time.4
2 Felix Addor and Alexandra Grazioli, Geographical Indications Beyond Wines and Spirits, 5 J.W.I.P.
6. 873, 883, Nov. 2002. See also Edgardo Bourgoing, Everything You Always Wanted to Know About
Geographical hIdications, Feb. 2003, available at http://www.inta.org/articles/everything.html (last
visited Sep. 2, 2004). Geographical indications have been traced back to Naxos Wines and Sicilian
Honeys in the fourth century B.C., Iberian Ham in Caesar Augustus' era, and later the Bordeaux Wines,
Provoke Olive Oils and Russian Leather of the 18th century. Id.
3 "[I]n the absence of an international framework for the recognition of geographical indications, and
the fact that the applicable laws at present relate to trade and goods, whereas domain name registrations
are wider in scope, it is problematic to amend the UDRP to cover the improper use of geographical
indications as domain names." Intellectual Property on the Internet: A Survey of Issues, 59. WIPO
Publication No. 856, 2002.
4 BLACK'S LAW DICTIONARY, 1501. (7th ed. 2001).
Molly Torsen JIVI'()S
Although this is the only reference to or definition of a geographic
indication in a 2001 U.S. legal dictionary, recent international treaties
have defined, mentioned, and discussed it more and more frequently over
the past decade. A geographic indication is dissimilar to a trademark on
many levels. Unlike a trademark, which usually protects the goodwill of
a specific individual or entity, a GI is a collective right; each producer
established in the geographical area specified by the GI may use the GI
for its products from that specific region. Trademarks are protected
either on a "first to use" or "first to file" basis, depending on the
jurisdiction, but GIs are assigned based on who has a "better right" to
that GI rather than who the first party was who decided to use it.5
There
are parts of traditional U.S. trademark law, however, that address some
of the collectivity aspects of GIs; their respective similarities and
differences will be discussed below.
For products ranging from wines to tobacco to couture perfume,
some consumers are interested in the geographic origin of their
purchases. The difference between a glass of red wine hailing from the
Bordeaux region of France and one from Napa Valley is one of great
import to some cooks, diners and connoisseurs.6 In the perfume
industry, the origin of the various aromatic notes in a scent are
sometimes highlighted to inform the prospective buyer that the
ingredients of the perfume are uncommon or of highest quality.7
Whatever a consumer's proclivities may be, geographic indications may
play some kind of role in his or her choice of goods. Whether those
preferences are valid or reasonable is outside the scope of this analysis,
but studies have shown that a product's geographical origin can
definitely be a factor in which product a consumer chooses to buy.8
5 Addor and Grazioli, supra note 2 at 873. An example would be Parma ham. In Italy, and many
other countries, it is presumed to come from Parma, Italy. In Canada, however, the term was
trademarked. Under the "better right" maxim, the Canadian trademark would be invalid. There is a
provision in TRIPS, however, that allows well-established (more than ten years before TRIPS was
implemented) trademarks to remain valid.
6 See, e.g., James Suckling, Bordeaux's Bold New Vintage, WINE SPECTATOR, June 30, 2004, at 66.
7 A new perfume from Prada® is advertised on the Neiman Marcus® website: "The Prada Fragrance
re-explores the spirit of amber in four characteristic ways, each based on one ancestral ingredient: Pure
sandalwood oil from India; Addictive patchouli leaves from Indonesia; Precious labdanum resin from
France; Profound benzoin from Siam." See http://www.neimanmarcus.com/store/catalog/
prod.jhtml ?itemld=prod 14770328&parentld=catOO0380&masterld=cat000339&grandMasterld=catOO02
93&cmCat=beautyl (last visited July 10, 2004).
8 See, e.g., Norbert Olszak, Droit des appellations d'origine et indications de provenance, Editions
TEC & DOC, Paris, 2001, p.5.
January 2005 Apples and Oranges (and Wine)...
A. INTERNATIONAL AGREEMENTS REGARDING GIs
International protection for GIs has wavered in strength in various
countries since the Paris Convention for the Protection of Industrial
Property [Paris Convention] of 1883.9 The protection for GIs in the Paris
Convention was relatively weak; signatories prohibited the import or sale
of goods that falsely indicated their source, producer, manufacturer or
merchant, but only in the event of serious fraud.' 0 The United States was
among the signatories to the Paris Convention because the level of
protection provided GIs was fairly lax. I Indeed, the term "geographical
indication" is not included in the Paris Convention; the idea therein is
protected under Article 10, which describes false indications:
Any producer, manufacturer, or merchant, whether a natural person or a legal entity,
engaged in the production or manufacture of or trade in such goods and established
either in the locality falsely indicated as the source, or in the region where such
locality is situated, or in the country falsely indicated, or in the country where the
false indication of source is used, shall in any case be deemed an interested party.'2
Chronologically, the next international treaty dealing with
geographical indications was introduced eight years later as The Madrid
Agreement for the Repression of False or Deceptive Indications of
Source on Goods [hereinafter Madrid Agreement]. 13 Given the higher
level of protection demanded in the Madrid Agreement, the United States
is not a signatory. As of July 15, 2004, there are 34 countries' 4 party to
this Agreement; its impact, due to the low level of support from the
international community, has been minimal.' 5 France, perhaps the
world's strongest supporter of GIs because of its wine industry, was an
original signer of the Madrid Agreement, along with Spain, Switzerland,
9 Mar. 20, 1883, as last revised July 14, 1967, 21 U.S.T. 1583, 828 U.N.T.S. 305.
10 See Louis C. Lenzen, Bacchus in the Hinterlands: A Study of Denominations of Origin in French
and American Wine Labeling Laws, 58 TRADEMARK REP. 145, 184 (1968).
11 Stacy D. Goldberg, Who Will Raise the White Flag? The Battle Between the United States and the
European Union over the Protection of Geographical Indications, 22 U. PA. J. INT'L ECON. L. 107,
112 (2001).
12 Paris Convention, supra note 8, Art. 10(2).
13 Apr. 14, 1891, as last revised Oct. 31, 1958, 828 U.N.T.S. 389.
14 The Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods,
Status, available at http://www.wipo.int/treaties/en/documents/word/f-mdrd-o.doc (last visited Aug. 1,
2004).
15 Goldberg, supra note II at 114.
Molly Torsen JPTODS
Tunisia, and the United Kingdom. 16 In fact, in 1824, almost 60 years
prior to the Paris Convention, France was the first country to pass specific
legislation on geographical indications of source; it imposed harsh
criminal penalties on people who falsely designated their goods' origin. 17
The Paris Convention and the Madrid Agreement governed
geographical indications in international trade until the enactment of the
Lisbon Agreement for the Protection of Appellations of Origin and Their
International Registration in 1958 [hereinafter Lisbon Agreement]. 18
This is the first international agreement to define "appellation of origin:"
[T]he geographical name of a country, region, or locality, which serves to designate
a product originating therein, the quality and characteristics of which are due
exclusively or essentially to the geographicalenvironment, including natural and
humanfactors....The country of origin is the country whose name, or the country
in which is situated the region or locality whose name, constitutes the appellation
of origin which has given the product its reputation.' 9
It also provides a specific rule prohibiting descriptive names, such
as "Burgundy-style Beaujolais." Article 3 provides that "[p]rotection
shall be ensured against any usurpation or imitation, 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."20 Furthermore, the Lisbon Agreement provides
for a strict level of protection of geographical indications through an
organized international registration system, 21 but none of its provisions
has had the opportunity to be implemented in a way that would be
effective internationally since, as of July 15, 2004, only 21 countries are
party to the agreement. 22 Once again, France was an original member
but the United States has not yet signed it.23 These three treaties, the
16 Madrid Agreement, Status, supra note 14.
17 See Leigh Ann Lindquist, Champagne or Champagne? An Eraminationof U.S. Failure to Comply
with the Geographical Provisionsofthe TRIPS Agreement, 27 GA. J.INT'L & COMP. L. 309, 312-313
(1999).
18 Oct. 31, 1958, as last revised Jan. 1,1994, available at http://www.wipo.int/clea/docs/en/wo
/woOl2en.htm (last visited Aug. 1, 2004).
19 Id., Art. 2. (emphasis added).
20 Id., Art. 3.
21 Article 5 of the Lisbon Agreement lays out a detailed registration system which would collect and
disseminate registrations through acentral bureau.
22 Lisbon Agreement, Status, available at http://www.wipo.int/treaties/en/documents/word/jlisbon.doc
(last visited Aug. I, 2004).
23 Id.
Apples and Oranges (and Wine)...January 2005
Molly Torsen JPTOS
Paris Convention, the Madrid Agreement, and the Lisbon Agreement,
were the precursors to the articles governing GIs in the World Trade
Organization's Agreement on Trade-Related Aspects of Intellectual
Property Rights [hereinafter TRIPS Agreement] of 1994.24
II. CURRENT INTERNATIONAL DEFINITIONS OF GIs
"The relationship between trademarks and GIs is complex and the
balance attempted by negotiators is tenuous and open to varied
interpretations." 25
The TRIPS Agreement does not use the term
"appellation of origin," as did the Lisbon Agreement, but rather defines
and uses "geographical indication." It provides:
Geographical indications are, for the purposes of this Agreement, indications which
identify a good as originating inthe territory of a Member, or a region or locality in
that territory, where a given quality, reputation or other characteristic of the good is
essentiallyattributableto its geographicalorigin.26
What this definition does not include is a reference to a product's
process or method of manufacture or other human factors, as did the
Lisbon Agreement; rather it ties the product to its place of origin. But
depending on the term's usage and the author of the term, "appellation
of origin" can be a synonym for geographical indications2 7 or a subset of
it;28 geographical indications can be a subset of "labels of origin,' 29
or,
alternatively, they can be two separate concepts under the same general
24 Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex IC, Legal
Instruments - Results of the Uruguay Round vol. 31, 33 I.L.M. 81.
25 Dwijen Rangnekar, Geographical Indications: A Review of Proposals at the TRIPS Council,
UNCTAD/ICTSD Capacity Building Project on Intellectual Property Rights and Sustainable
Development, June 2002, 21-22.
26 TRIPS Agreement, supra note 24, Sec. 3, Art. 22(1) (emphasis added).
27 See Paul J. Heald, Impact of the TRIPS Agreement on Specific Disciplines: Trademarks and
Geographical Indications of Origin: Exploring the Contours of the TRIPS Agreement, 29 VAND. J.
TRANSNAT'L L. 635, 636 (1996).
28 See Goldberg, supra note II at 108. "Geographical indications include both indications of
source...and appellations of origin..." Id. See also WIPO's Geographical Indications Frequently Asked
Questions, available at http://www.wipo.int/about-ip/en/about__geographicalind.html?printable=true
(last visited Aug. 14, 2004).
29 See Barham, supra note I at 127. "Geographical indications are known more familiarly as labels
of origin, of which they are one type." Id.
Jaury20.Ape an rne adWn).
category of "indications of source,' 30
but cover different genres of
products.3' It is possibly the consolidation of these two terms in
international parlance that renders some of the international conversation
opaque; the parties' respective goals and understandings of the
terminology is different from the outset, which makes negotiations that
much more unclear.
As the title of this article suggests, it may be the case that traditional
ideas ensconced in the appellation d'origine controllie [hereinafter
AOC] system do not carry over into the modern understanding of
geographical indications. Various parties, therefore, depending on their
traditions in this field, or lack thereof, are misunderstanding each others'
semantics in discussing a system upon which they are all trying to agree.
On top of their different GI histories, countries have different
understandings of consumer protection. "United States trade law
traditionally has been concerned with protecting the consumer from
deception, whereas French law centers on the interests of the products or
manufacturers and the improper use of their marks by other
producers." 32 Following a brief overview of GIs in the TRIPS
Agreement, the remainder of this article will focus on the background
and evolution of GIs and AOCs in France and the United States, analyze
some other objections to the GI provisions in the TRIPS Agreement, and
propose a foundational framework of compromise for moving forward in
international negotiations.
A. THE TRIPS AGREEMENT
TRIPS is viewed as a minimum standards agreement because WTO
member countries may legislate beyond the TRIPS minimums; TRIPS
30 An indication of source is a conveyance that aproduct originates in a specific geographical region.
Examples are "made in France," and "product of the USA" See Organisation for an International
Geographical Indications Network, available at http://www.origin-gi.comfaq.php?myfaq=
yes&idcat=l&categories=Gl (last visited Sep. 5, 2004).
31 See, e.g., Annexes AOC, l'Institut National des Appellations d'Origine, available at
http://www.inao.gouv.fr/public/home.php (last visited Aug. 14, 2004). "Le rfglement (CEE) n'2081/92
drcrit dans son article ler les produits faisant partie du champ d'application pour les AOP, qui differe par
certains points du champ d'application des AOC." According to certain EU definitions, an appellation
d'origine (AOC) can only be granted to agricultural or dairy products.
32 Lori E. Simon, Appellations of Origin: The Continuing Controversy, 5 NW. J. INT'L L. & BUS.
132, 135 (1983), citing Michael Kirk, Revision of the ParisConventionand Appellations ofOrigin, 1979
A.B.A. SEC. PAT. TRADEMARK & COPYRIGHT L. 185, 186 (1979 summary of proceedings, app. F)
(Symposium speech by Michael Kirk, Director, Office of Legislation and International Affairs, U.S.
Patent and Trademark Office, given Aug. 15, 1979).
33 Goldberg, supra note II at 123.
Apples and Oranges (and Wine)...January 2005
made a "great effort not to disturb the status quo as much as possible."33
Articles 22 through 24 of the TRIPS Agreement govern geographical
indications. Article 22 covers all products and defines a standard level
of protection in that geographical indications should be protected to
avoid misleading the public and to prevent unfair competition. Article
23 provides enhanced protection for geographical indications for wines
and spirits and Article 24 provides how international negotiations should
take place and enumerates various exceptions to the general rules, such
as allowing "generic" terms in one country that are classified as
geographical indications elsewhere to escape that classification. 34
One
such example is "cheddar cheese," which most often refers to a
particular type of cheese that is not necessarily produced in Cheddar,
UK.35 The same escape from GI classification can occur if a term has
already been registered as a trademark, such as "Parma ham;" in Italy,
that denotes ham from the region of the city of Parma, but in Canada it
is a registered trademark for ham made by a Canadian company.36
The current debate in the TRIPS Council 37 is, firstly, whether and
how to create a multilateral register for wines and spirits and, secondly,
whether to extend the higher-level Article 23 protection to other goods
aside from wine and spirits. This writing will focus on the first issue but
the second is also very contentious; several parties are opposed to the
idea that wine and spirits deserve special treatment and propose that the
value GIs in general would be harmed by inconsistent application.
Article 22 protection would allow a vase to be sold as "Murano" glass,
"made in Turkey," but Article 23 protection would require that Murano
glass be made in Murano, Italy, regardless of any additional
descriptors. 38 The TRIPS Agreement tries to take into account the fact
that different countries use a gamut of legal means to protect
geographical indications, ranging from specific GI laws to parts of
trademark law to purely common law. These differences, however,
coupled with ideological differences, account for the inability of many
countries to come to an agreement regarding the strength and breadth of
34 TRIPS Agreement, supra note 24, Art.24(6).
35 The World Trade Organization: TRIPS: Geographical Indications, available at
http://www.wto.org/english/tratop-e/trips-e/gi-background-e.htm (last visited Aug. 15, 2004).
36 Id.
37 Under the Doha mandate, which was a result of the WTO Doha Ministerial Conference in 2001.
See http://www.wto.org/english/tratope/dda-e/dohaexplained e.htm#agriculture (last visited Aug. 31,
2004).
38 See, e.g., History of Murano Glass, available at http://www.boglewood.com/murano/history.html
(last visited Aug. 16, 2004).
Molly Torsen JPTOS
January 2005 Apples and Oranges (and Wine)...
GI protection. Indeed, the TRIPS Agreement requires that its signatories
negotiate to create a multilateral register for wines and spirits; work
began in July of 1997, but no consensus has been reached.39
There are two main schools of thought on the issue; one proposes a
voluntary system, whereby geographical indications would be registered
in a database that individual countries could choose to participate in or
not after being encouraged to consult the database.40 The United States
is a member of this contingent. The other perspective on the matter, the
"EU Proposal,"' 4 1
suggests that registration of a GI would create the
presumption that the GI would be protected in all other countries and
that, once it has been registered, no country could refuse protection after
an I8-month grace period. 42 Because the European Union already has
specific regulations in place governing GIs,43 it stands to "benefit
substantially from the economic gains derived from protecting its
intellectual property rights in geographical indications" 44 Even so, the
European regulations are not universally praised in Europe; there are
different levels of understanding of the strength of a GI and, by
streamlining the various laws into one, those countries with stronger GI
regulations find their GIs have less value than beforehand because of
inevitable dilution due to weaker overall GI laws. 45
39 Id.
40 See http://docsonline.wto.org, TN/IP/W/5. The countries in favor of this stance are Argentina,
Australia, Canada, Chile, Colombia, Costa Rica, Dominican Republic, Ecuador, El Salvador, Guatemala,
Honduras, Japan, Namibia, New Zealand, the Philippines, Chinese Taipei and the United States.
41 See WTO, Geographical Indications, supra note 35.
42 See WTO documents, supra note 40, IP/C/W/I07/Rev. I. Countries in favor of this proposal are
Bulgaria, Cyprus, the Czech Republic, the European Union, Georgia, Hungary, Iceland, Malta,
Mauritius, Moldova, Nigeria, Romania. the Slovak Republic, Slovenia, Sri Lanka, Switzerland and
Turkey.
43 See. e.g., Council Regulation No. 2081/92 on the Protection of Geographical Indications and
Designations of Origin for Agricultural Products and Foodstuffs. 1992 O.J. (L 203) I (corresponding to
the subject matter of TRIPS Article 22).
44 Goldberg, supra note I I at 145.
45 See, e.g., Robert Tinlot, Le terroir:un concept tla conquite di monde, Revue des (Enologues
n°101, I1(2001). "La Commission europfenne, dans ses propositions de rfglement, avait tents aussi de
supprimer lar~ffrence A l'origine gdographique obligatoire quand on utilise le nom de lavari~td de vigne
dans ladesignation du vin. Elle n'hdsiterait pas, ainsi A habituer les consommateurs a l'usage de ces
quelques noms magiques qui, ddtachs de leurs terroirs, permettront d'ouvrir largement l'espace
europ6en A laconcurrence mondiale, au risque de limiter ainsi lavalorisation des regions productrices
de ces varidtds privilfgides." The EC, in its regulation proposals, has tried to suppress any reference to
a wine's geographic origin when using a wine varietal designation. The EC would not hesitate to get
consumers accustomed to using these magical names which, detached from their territories, would allow
the EU to compete globally in the wine market at the risk of stultifying the value of the names of these
regions where these rare varietals are produced. Id., translated by the author.
Apples and Oranges (and Wine)...January 2005
As was mentioned above, as a product of the WTO, the TRIPS
Agreement effects a large portion of the world. The Agreement also
mandates enforcement of its regulations. Part Three of TRIPS provides
that members must ensure that enforcement procedures in every
jurisdiction provide effective action against any act of infringement,
including injunctive relief, money damages, strong border control
measures, and remedies in criminal law including seizure, forfeiture and
destruction of infringing goods.46 Many commentators on the TRIPS
Agreement have suggested that its enforcement provisions are some of
its most promising sections. 47
III. REASONS FOR DISSIMILAR PERSPECTIVES ON
GEOGRAPHICAL INDICATIONS
Perhaps the most pronounced rift in thinking on GIs can be
demonstrated by how the historic development of GI law, or lack thereof,
has developed alongside the wine industries in France and the United
States. The end goal in both jurisdictions is not dissimilar, but the
development of intellectual property law in its context, the goals of
antitrust law, and the resultant behavior by domestic consumers have
colored the two countries' outlook on the role of GIs in international
intellectual property law.
A. FRANCE
France has a long history of intellectual property prowess. French
writers, for example, were the first to organize a copyright collection
society in 1837.48 The French were also on the forefront of GI
protection, as was noted above.49
The French AOC is controlled by the
state to assure both territorial origin and conformity to precise rules for
production, and to guarantee their typicity or distinctive character.50 In
France, an AOC guarantees a link between a product and the earth that
produces it; that product cannot be grown outside a delimited geographic
46 The TRIPS Agreement, supra note 24, arts. 41-61.
47 Heald, supra note 27 at 649.
48 See Caslon Analytics: Copyright Collecting Societies Profile, available at
http://www.caslon.com.au/colsocietiesprofile.htm (last visited Aug. 16, 2004).
49 See, e.g., Lindquist, supra note 17.
50 Barham, supra note I at 128.
Molly Torsen JPTOS
January 2005 Apples and Oranges (and Wine)... 41
zone.51 The AOC system is the oldest of the European label of origin
systems and is widely regarded as the most strict and thorough.52 In
general, the definition of an AOC, regardless of its author or context, has
higher compliance requirements than do GIs because it adds an element
of verification or quality.53 Mere reputation of a product is not sufficient
to be worthy of AOC protection because specific qualities need to be
expressed in the particular product. Furthermore, AOCs must be direct
geographical names of countries, regions or localities. Therefore, from
this point of view, "Jaffa" oranges from Israel would be AOC-compliant
because Jaffa is part of the municipality of Tel Aviv-Yafo in Israel, but
"D6le" wine - from the Canton of Valais in Switzerland - would not be
AOC- compliant because the name D61e does not have a matching
geographical counterpart.
54
i. The FrenchWine Industry- Historyand Modern Context
"They say it is France's worst wine crisis in 35 years ....French
winemakers are confronting the realities of a changing world like never
before."55 Indeed, in the past few months, unprecedented changes have
taken place in France. In late May of 2004, the president of the National
Committee of Wines and Spirits established four working groups at the
National Institute of Appellations of Origin [hereinafter "INAO," in
accordance with the French acronym] in an effort to make French wine
labels more accessible and understandable for the international
marketplace. 56 Because the demand for French wines has declined to the
point where owners of small and average-size vineyards are confronting
bankruptcy, there is a movement amongst them to do away with traditional
French labeling and to use common grape names, like merlot and
chardonnay, on their wines.57 In an emergency meeting in late July 2004,
French Agricultural Minister Herv6 Gaymard and a group of winegrowers
decided to implement the plan of labeling bottles according to grape
51 Classifications des vins franrais, available at http://www.oenologie.fr/droit/classif/
classif home.shtml#l (last visited Sep. 5, 2004).
52 Id.
53 See, e.g., Addor and Grazioli, sapra note 2 at 868.
54 Id., at 869.
55 Joe Ray, New World OrderHas French Wine Industry Over a Barrel, Newhouse News Service,
Aug. 9, 2004.
56 Communiqu6 de Presse, Lancement d'une rdflexion collective sur lasegmentation des vins franqais,
June 1, 2004, available at http://www.inao.gouv.fr/public/communiques/detailComm.php?id=
33
&pop=l
(last visited Aug. 17, 2004).
57 Frank J. Prial, Much ofBordeatux Goes Begging,THE NEW YORK TIMES, Aug. II, 2004.
Moll Toren 'ros
variety in order to "help clarify and simplify the presentation of the
French offer on international markets."58 This drastic measure, already
being criticized by a number of major winegrowers, is seen as necessary
for France to regain part of its declining market share.59
The French have taken great care to distinguish their quality wines
over the past century, which is one reason this kind of shift in labeling is
eliciting such strong reactions from several winegrowers. Following a
series of crop-destroying plant diseases and insect problems in the late
1800's, French winegrowers were replanting and rebuilding their
vineyards in the early 1900's. The shortage of wine at the time elicited
fraudulent wine sales because low-quality wine could be passed off as
being a high-quality wine from a premium region like Burgundy. 60
Owners of quality vineyards moved to protect consumers by
guaranteeing the quality of their wines through a set of rules among
regional growers. This preliminary agreement in the 1920's became a
framework for the AOC rules mandated upon the creation of the INAO
in 1937.61 The AOC laws defined a wide range of standards for every
production area it governed. They included geographical limits on the
production area, the density of planting, the pruning standards, yields per
hectare, compulsory tasting by a panel of experts, appropriate grape
varieties, trellis systems, wine making techniques, lab analysis standards
and other vineyard practices. French AOC authorities are sought out
year after year by more and more international entities for an
explanation of their AOC system. 62 Whether this trend will continue in
the current climate of wine labeling remains to be seen.
ii. The French Wine Industry- CurrentDifficultiesand Legislation
Article 23(4) of TRIPS requires negotiations regarding a registration
system for wine and other issues relevant to a registration system for GIs
for spirits.63
France provides a good example for comparison to the
58 France Names its Grapes to Keep a Place in Global Wine Market, SOUTH AFRICAN WINE, July
26, 2004, quoting Hervd Gaymard.
59 Elaine Sciolino, A Canpaign to Drink Another Glass of Wine for France, THE NEW YORK
TIMES, July 23, 2004.
60 See, e.g., The Appellation System in France, available at http://www.cellamotes.net/
appellation-system-in france.htm (last visited Aug. 17, 2004)
61 Id.
62 See The AOC Guide, Institut National des Appellations d'Origine, available at
htp://www.inao.gouv.fr/public/testesPages/Missions I22.php?inc= I (last visited Aug. 17, 2004).
63 See WTO, Report (1996) of the Council for TRIPS, WTO Doc. IP/C/8 (Nov. 6, 1996), available at
http://docsonline.wto.org.
Molly Torsen JPTOS
United States in this realm because the two countries' GI practices have
been molded from very different beginnings. It is the general European
concept that labels of origin belong to a region and are administered by
state governments that prevent consumer fraud by overseeing certification
systems and other controls.64 Even within the EU, however, France is
known to be especially strict in its awarding an AOC. "The AOC is
particularly interesting to consider as a GI because it influenced the
development of the European Union Protected Designations of Origin, to
the point that once an AOC is awarded in France, there is very little
questioning of its legitimacy at the level of the EU.
65
Despite the current dip in the French wine market, France's high
standards for its wine have translated into a very high level of
international respect for French wines. It is a country where vine
varieties have acclimatized over the centuries, and various methods of
cultivation have developed, rendering France one of the most richly
diverse and praised wine countries in the world; no other country has
such a wide range of climates and soil types. 66 Wine is not exclusive to
France, of course. There are over a thousand grape varieties produced
throughout the world among which is a handful of 'international' grape
varieties.67 This is where the crux of the debate becomes apparent.
It is becoming more and more common for labels to indicate awine's original grape
variety. This is particularly true in more recently established winegrowing regions,
such as California, where virtually all wines are named after their grape variety. In
countries in which wine production is a longstanding tradition, however, the
association between grape varieties and geographical origin is so well-entrenched
that the latter suffices.68
France has twelve principal winegrowing regions, all of which
produce a rich range of wines.69 Not surprisingly, the French are
unwilling to let go of a longstanding system for protecting the goodwill
64 Barham, supra note I at 129.
65 Id., at 131.
66 Andr6 Domin6, WINE. Konemann Verlagsgesellschaft mbH (2001), 154.
67 Franqois Collombet, THE FLAMMARION GUIDE TO WORLD WINES. Flammarion (2000),
22.
68 Id., at 25. This author cites ten "great classic grape varieities." They are Cabernet Sauvignon,
Pinot Noir, Merlot, Cabernet Franc, Syrah, Riesling, Chardonnay, Gewurztraminer, Sauvignon Blanc and
Muscat.
69 Id., at 29.
Apples and Oranges (and Wine)...January 2005
of their high quality wines from false advertising and freeloading. As
mentioned above, even the EU, a general proponent of higher GI
standards on the international level, has regulated in the area of GIs less
stringently than has France.
EU Regulation EED 2081/92 provides two categories of Indications
of Geographical Origin (IGOs); the first is a Protected Designation of
Origin (PDO); the second is a Protected Geographical Indication
(PGI).70 With the various levels of protection layered on top of each
other, as is the case with most European countries, the GI discussion
becomes even more clouded. There is also an unresolved but critical
debate regarding the wine appellation system in general; for example,
whether the AOC protects the connection between a product and its
place of origin or whether it protects a more science-based formula for
an objective seal of quality approval - this remains a highly contested
notion. 7' This distinction could in fact encapsulate of some of the
misunderstandings in GI and AOC debates.
This semantic rift goes back to the general differences in
international definitions. Does a GI protect a product solely because of
its origin or is there also an element of human contribution, such as
know-how or specific methodology? If so, which factor is more
important? As the French wine market declines, some theorists - this
one an American wine critic - are unsympathetic to France's plight and
suggest it loosen its draconian AOC regulations.
Controlled appellations have proliferated like aphids on a rose. The original idea
was conservative.... But no sooner did (a) few acknowledged great wine zones get
such protection - at a price of heavy regulation and bureaucratization - than every
other winegrowing area, no matter how insignificant, clamored for similar status...
. Does it matter whether a red Burgundy can legally contain Cabernet Sauvignon
when its ancient tradition was exclusively Pinot Noir? You bet it does. But do we
care about the sanctity of Coteaux du Languedoc? Hardly.72
While the writer's references to cabernet sauvignon and pinot noir
are particular grapes with which most red wine drinkers are familiar, the
reference to Coteaux du Languedoc is an AOC label. There are thirtyfive
appellations in the Languedoc region, each with its own specialized
70 For a succinct description of the EU's regulations on GIs, see Rangnekar, supra note 25, at 23.
71 Id., at 24-25.
72 Matt Kramer, THE WINE SPECTATOR, Sep. 15, 2004, at 36.
Molly Torsen JPTOS
menu of standards. 73 In comparison to the narrow and numerous AOCs
protected in France, the United States has relatively few protected GIs,
like "Napa Valley" for wine, "Washington State" for apples, and
"Florida" for oranges.74 One writer stated succinctly: "In the United
States, neither culture nor positive law gives any meaning to many
AOCs, and France should not expect to win legal protection for
geographical indications that mean nothing to the American
consumer."75 This broad statement is slightly misleading, however,
because the United States does indeed have some "positive law" that
parallels many of the ideas, if not the nomenclature, of the French AOC
system. And not all Americans disdain the French AOC system; one
writer commented upon wine from Chablis, a small village to the
southeast of Paris: "The reputation of Chablis, one the world's great
wines, has been smeared ever since the California wine industry stole the
name."76 It is true, however, that most United States lawmakers tend to
look at GI laws with skepticism.
B. THE UNITED STATES
At the outset of TRIPS negotiations, the United States' proposal did
not so much as mention geographical indications. 77 "The United States
is familiar and comfortable with trademarks as a way of protecting the
intellectual property associated with a business, oriented as it is towards
liberal economic theory based on individual ownership." 78 In the United
States, the Bureau of Alcohol Tobacco and Firearms [hereinafter BATF]
regulated domestic and international GIs until January 2003 under the
Homeland Security Act;79 it was also the governmental body responsible
for establishing viticultural areas in the United States in 1979 and
73 Collombet, supra note 67, at 61.
74 Geographical Indications, United States Patent and Trademark Office, available at
http:/lwww.uspto.gov/web/offices/dcon/olialglobalip/geographicalindication.htm (last visited Aug. 23,
2004).
75 Jim Chen, A Sober Second Look at Appellations of Origin: How the United States Will Crash
France'sWine and Cheese Party, 5 MINN. J. GLOBAL TRADE 29,53 (1996).
76 Michael Apstein, Renember Real Chablis Doesn't Come in a Jug, The Boston Globe, Sep. 2,
2004.
77 Suggestion by the United States for Achieving the Negotiating Objective, MTN. GNG/NG I I/W/14
(Oct. 1987), and Revision, 17 Oct. 1988, MTN.GNG/NGI l/W14/Rev.1.
78 Barham, supra note I at 129.
79 See Department of the Treasury, Industry Circular, Jan. 21, 2003, available at
http://www.ttb.gov/publications/ind-circulars/ic2003_0
2
.htm (last visited Aug. 25, 2004).
Apples and Oranges (and Wine)...January 2005
approving future ones.80
The BATF established over 150 American
Viticultural Areas, ranging from Napa Valley to the Ohio River Valley.8'
As of January 2003, the new Alcohol and Tobacco Tax and Trade Bureau
[hereinafter TTB] has been designated to administer the regulation of
wine label content. It ensures proper grape variety representations and
appellation designations and monitors the inclusion of health statements
on wine labels. 82
With a greater focus on wine regulation than its
predecessor, the TTB should demonstrate a more thorough monitoring of
the wine industry than before. 83
Indeed, for a United States' state or
county appellation of origin, not less than 75% of the volume of the wine
must derived from grapes or other agricultural commodity that is grown
in the labeled appellation of origin.84
It is still the case in the United States, however, that wine labels are
not required to bear a varietal designator; descriptions such as "red
wine" or "table wine" are sufficient. But designations referring to other
geographical places, such as Chablis or Chianti, must also include an
appellation of origin to indicate the true place of origin, such as
"California Burgundy."85 This type of descriptor is anathema and flatly
incorrect to many European minds; a Burgundy wine should be
produced in the Burgundy region of France.86
Regarded in a different
light, however, such a term is deferential to the uniqueness of the French
Burgundy; perhaps a consumer who is somewhat knowledgeable about
wine regions will reach for a 'genuine' French Burgundy before a
California Burgundy.
The TRIPS Agreement could be argued as either supportive or nonsupportive
of names such as "California Burgundy," or terms the United
80 Lindquist, supra note 17 at 324.
81 See 27 CFR § 1.9 (2003).
82 Margaret L. Wickes, A Toast to the Good Life: Exploringthe Regulation of Clhampagne,LEDA at
Harvard Law School, Apr. 2003, available at http://leda.law.harvard.edu/leda/data/609/wickes.html. (last
visited Aug. 25, 2004). With the creation of the TTB, taxation and trade regulation duties were left in
the Treasury Department, while the responsibility for regulation and enforcement of laws and
investigation of crimes concerning bootlegging and smuggling, along with firearms, explosives and
arson, were turned over to the Justice Department. See Jim LaMar, Professional Friends of Wine,
Appellations of Origin, Feb. 2003, available at http://www.winepros.org/consumerism/appellation.htm
(last visited Aug. 25, 2004).
83 Id.
84 TTB, Alcohol, Appellations of Origin, available at http://www.ttb.gov/appellation/index.htm (last
visited Sep. 2, 2004).
85 What the Wine Label Tells You, BATF, Dec. 1999, available at http://www.atf.gov/pub/alctob-pub
p5l90l.pdf (last visited Aug. 20, 2004).
86 See, e.g., Barham, supra note 1,at 127-128.
Molly Torsen JRTOS
January 2005 Apples and Oranges (and Wine)...
States calls "semi-generic. '87 The United States has not historically
condoned an AOC system, but rather differentiated between certain
terms as being generic, semi-generic, or non-generic designations of
geographic significance. 88 Only recently has the United States included
a definition for and requirements for when and how to use American
AOCs. 89 Just as there are different degrees of strength when describing
various types of trademarks, 90 so has the United States utilized a multitiered
approach to geographical indications. An officer of the BATF had
the authority to deem a certain name as belonging to one of these
categories; some examples of now-generic names are "vermouth" and
"sake." 9' It is still the case that a semi-generic designation may be used
to designate wines of an origin other than that indicated by their oncegeographical
names if they are used as combinatorial terms, such as
"California Burgundy," indicating to the consumer that the wine has
some similarity to a Burgundy varietal produced in Burgundy, France,
but that it is actually made in California.
As noted above, however, many Europeans take exception to this type
of labeling. The United States also has a category of nongeneric names
that are distinctive designations of specific grape wines, i.e., that comport
with the European ideal of AOCs. Some examples are Chateau Y'quem,
Chateau Margaux, Pommard, Montrachet, Schloss Johannisberger and
Lacryma Christi,92 so "California Pommard" would be unacceptable.
Article 24(4) of the TRIPS Agreement provides that if nationals in one
country have used a geographical indication on the same product and in a
continuous manner for a period of ten years prior to the conclusion of the
TRIPS Agreement in 1994, they may continue to use that GI on that
product. This provision creates a possible advantage for older wineries,
however; a newer winery may have to sell its red wine as "red table wine,"
for example, while an established winery could continue to sell the same
product as "madeira," if it had been doing so since 1984 or before.93
87 "The following names shall be treated as semi-generic: Angelica, Burgundy, Claret, Chablis,
Champagne, Chianti, Malaga, Marsala, Madeira, Moselle, Port, Rhine Wine or Hock, Sauterne, haut
Sauterne, Sherry, Tokay." 27 CFR § 24.257 (2003).
88 27 CFR § 4.24 (2004).
89 Appellations of Origin, TTB, available at http://www.ttb.gov/appellation/index.htm (last visited
Aug. 25, 2004).
90 For example, a trademark that is fanciful and arbitrary is likely to receive stronger trademark
protection than is one that is descriptive or generic.
91 27 CFR § 4.24 (2004).
92 Id.
93 See. e.g., Lindquist, supra note 17, at 330.
January 2005 Apples and Oranges (and Wine)...
Arguably, the United States does not entirely adhere to the TRIPS
Agreement provision, however; it sidesteps much of the "grandfather-in"
issue by permitting the classification of semi-genericism, 94 which would
ostensibly permit a label such as "California Madeira."
i. DespiteHistoricalDifferences, the LanhamAct and CaseLaw are
Analogous to France'sSystem
Aside from the TTB, however, the United States has applicable
legislation to govern false designations of origin within the Lanham Act.
There are several concepts wrapped in the French AOC system that have
analogous counterparts in current American legislation and case law.
Two special types of marks, certification and collective marks, have
comparable goals to the French AOC concept. Perhaps more
importantly, section 43 of the Lanham Act, "False Designations of
Origin, False Descriptions, and Dilution Forbidden,"95 offers a thorough
means by which to refute the registration of a mark that misleads
consumers based on GI concepts. This section of the Act provides a
claim for a civil action against any person who uses any "word, term,
name, symbol, or device, or any combination thereof, or any false
designation origin," in commerce, that is likely to "cause confusion or to
deceive as to the affiliation, connection, or association of such person
with another person, or as to the origin, sponsorship, or approval of his
or her goods... ,"96 It goes on to ban commercial advertising or
promotion that misrepresents the "nature, characteristics, qualities, or
geographic origin of his or her of another person's goods, services, or
commercial activities."97 The verbiage addresses both the quality and
place aspects important to the French.
A certification mark is a word, symbol, or device used on goods or
services to certify the place of origin, material, mode of manufacture,
quality, or other characteristic. 98 Certification marks are most often used
94 See 26 USCS § 5388 (c) (2004). "Semi-generic designations may be used to designate wines of
an origin other than that indicated by such name only if(A)
there appears in direct conjunction therewith an appropriate appellation of origin disclosing the
true place of origin of the wine, and
(B) the wine so designated conforms to the standard of identity, if any, for such wine contained in the
regulations under this section or, if there is no such standard, to the trade understanding of such class or
type." Id.
95 See 15 U.S.C. § 1125.
96 Id.
97 Id.
98 See 15 U.S.C. § 1127.
Molly Torsen JPTOS
January 2005 Apples and Oranges (and Wine)...
by trade associations or other commercial groups to identify a specific
kind of goods; this type of mark cannot be limited to a single producer,
but must be open to anyone who meets the set of standards set out for a
specific certification. 99 Two examples of certification marks registered
with the United States Patent and Trademark Office are the encircled
"K" for kosher foods, and "Grana Padano D.O.C." for cheese coming
from regions specified by Italy and in accordance with standards codified
by the Italian government. Indeed, the "D.O.C." is the Italian version of
the French "A.O.C.," standing for controlled denomination of origin.
A collective mark is a trademark or servicemark used by an
association or other type of group to either identify the group's products
or to signify membership in that group.' 00 The "collective" itself does
not sell goods or perform services under a collective mark, but may
advertise or other promote goods or services sold or rendered by its
members under that mark.' 0' Some examples of collective marks placed
on products which have reached a threshold of specified quality or other
type of approval from the collective are "OAA" for Opticians
Association of America, "FLO" for the Fairtrade Labelling
Organizations International, and "FM" for the Factory Mutual Insurance
Company. This "stamp of approval" approach is analogous to French
wine AOCs, for which a panel of tasters are often required to endorse
every wine with an AOC.
ii. The Napa Valley Case
Just as France is more interested in protecting the goodwill of its
wine producers than are other European countries that produce less
wine, so is California more protective of the goodwill of its wine
producers than other states. California produces more than 90 percent of
the nation's wine and its regulation of alcoholic beverages dates back to
1860.102 The California Supreme Court recently unanimously decided
that labeling practices in California must adhere to certain high standards
promulgated by the state, and not be trumped by federal regulations,
99 Robert Merges, Peter Menell, and Mark Lemley, eds. INTELLECTUAL PROPERTY IN THE
NEW TECHNOLOGICAL AGE (Aspen Publishers, 3d ed., 2003), 544.
100 See 15 U.S.C. § 1127.
101 See Aloe Crime Laboratories, Inc. v. American Society for Aesthetic Plastic Surgery hIc., 192
U.S.P.Q. 170, (TTAB 1976).
102 Mike McKee, California Justices Buck Bronco's Right to Napa Wine Name, The Recorder, Aug.
6,2004.
Apples and Oranges (and Wine)...January 2005
which are less stringent for established winegrowers. 03 A California
law was passed in 2000,104 requiring that wines sold under a "Napa"
label must be made from at least 75 percent Napa-grown grapes. The
federal rules also have a 75 percent requirement but, as noted above,
there is a loophole or "grandfather" clause for brands established before
1986, and the contested brand names have been in existence since the
early 1970s and 1980s.
At issue was whether Bronco Wine Company, which makes Napa
Ridge, Rutherford Vintners and Napa Creek wines from grapes grown
outside the Napa Valley, could continue to label its wines with the word
"Napa." The actual origin of the grapes - from other regions of
California - is printed on the front and back labels, but in smaller print
than the brand names. 05 Amongst other reasons for deciding that the
labeling was misleading, the Court cited California State wine
regulations from 1934 which had been put in place to protect both the
consuming public and the wine industry as a whole. 106
These
regulations provided many specific rules, and declared that a wine would
be considered misbranded and in violation of the law if a wine produced
in California was labeled "Burgundy," or any other foreign place name,
without displaying - with equal prominence - the name of the place of
actual production.' 0 7 The Court carried this reasoning over into
American AOCs; namely, Napa. Interestingly, the term "geographic
indication" was not used ones, but rather "geographic source," and
"geographic brand name." The latter term is defined in the Code of
Federal Regulations as "a brand name of viticultural significance [that]
may not be used unless the wine meets the appellation of origin
requirements for the geographic area named."' 0 8
The case has been remanded to the court of appeals to consider
Bronco's remaining claims; Bronco has proposed that the California law
violates the United States Constitution's Commerce Clause, that it limits
its First Amendment right to free speech, and that it violates due process
by seriously compromising its brand value without just compensation.
Bronco's attorney has emphasized that it is not the province of a State to
103 Bronco Wine Co. v.Jolly, 33 Cal. 4th 943 (2004).
104 California State Business and Professions Code § 25241.
105 33 Cal. 4th 943, 951.
106 Id., at 97 1.
107 Id.
108 27 CFR 4.39(i).
Molly Torsen J PTOS
authorize conduct that a federal regulatory agency has addressed and that
Bronco may consider petitioning the U.S. Supreme Court. 10 9 The issue
that was decided, then, has to do with constitutional parameters of state
preemption, but the outcome of the case could have a direct impact on
wine labeling practices. The attorneys for the Napa Valley Vintner's
Association point out that a survey has shown that consumers who
purchased the wines in question believed they were buying Napa
wines,1 10 although Bronco's attorney suggests that consumers who
purchase Bronco's wines do so because they appreciate the quality and
value, not because they are misled as to the origin."' Whether
trademarks, GIs, AOCs, or an amalgamation of different legal theories
from common law apply, it seems the basic idea of avoiding consumer
deception is a common thread throughout the international tapestry of GI
and GI-like law.
iii. The UnitedStates Continues to Balk at EuropeanSuggestionsfor
TRIPS
In July of 2003, the House Agricultural Committee reviewed the issue
of GIs in World Trade Organization negotiations." 2 Several
representatives expressed their point of view that the United States should
not make any more concessions to France or to Europe than it has already:
Make no mistake, what the EU is asking for is not fair treatment; it's preferential
treatment, it's nothing less than a subsidy of European agriculture interests
through claw back of generic terms. If adopted, the EU's demands could
undermine the world's systematic approach to intellectual property protections,
and not just for GIs. 113
The TRIPS Agreement made a great effort not to disturb the status
quo and to enable individual countries to retain most, if not all, of their
current legal mechanisms for dealing with GIs.11
4
109 Daniel Sogg, CaliforniaSupreme Court Rtes That Napa-Named Wines Must Come from Napa,
Wine Spectator Online, Aug. 5, 2004, available at http://www.winespectator.com/Wine/Daily/
News/0, 1145,2558,00.html (last visited Sep. 5, 2004).
110 Horvitz & Levy, LLP, available at http://www.horvitzlevy.com/rewibron.html (last visited Sep. 5,
2004).
111 McKee, supra note 102.
112 Hearing of the House Agricultural Committee, July 22, 2003.
113 Id., quoting Jon W. Dudas, Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director, U.S. Patent and Trademark Office.
114 Goldberg, supra note I I at 123.
Apples and Oranges (and Wine)...January 2005
The United States, therefore, is able to argue that the European
perspective is too radical in its push to bring other countries in line with
its stronger level of GI protection, or "clawing back" now-generic names
into a realm of GI protection.'15 "[A] threat.. .arises from the clear
preference the European Union gives to geographic indications over
trademarks in their efforts to impose their system on the United
States ....If they succeed, they will have changed the core principals of
our intellectual property systems and expropriated the trademark
property of U.S. companies."' 16 Speaking on behalf of the United States
Wine Institute, Mr. James B. Clawson emphasized his past experience
with the European Union regarding their policies and negotiation tactics
on GIs and suggested that, in their efforts to restrict the international use
of their protected GIs, the EU is carrying out a "very calculated plan."' '7
Whether there is a calculated plan or simply a rift in understanding,
there is virtually no international consensus on the appropriate
framework of protection for GIs. "While the TRIPS Agreement sets out
minimum standards, it does not dictate the system that WTO members
must implement to protect GIs."' 18 Perhaps the desired outcome of an
eventual system - to protect consumers and producers from fraud - is
similar for every party involved; it is just the mechanism and semantics
that are dissimilar.
In the WTO's Decision Adopted by the General Council on August
1, 2004, GIs were noted as an issue of interest that has not been agreed
upon." 19
Clearly, European, and particularly French, winegrowers are
becoming aware that the differences in international labeling practices
are having a direct impact on their ability to market and sell their
wines.120
This is not, perhaps, a triumph for the United States, but rather
a reality for a global market with different kinds of consumers. While
the French may be accustomed to buying wine based on their knowledge
of or familiarity with AOCs, American buyers may be less likely to look
for that mechanism for quality verification. And maybe the AOC system
115 Id., at 123-124.
116 Hearing of the House Agricultural Committee, supra note 112, quoting Mr. Frank Z. Hellwig,
Senior Associate General Counsel, Anheuser-Busch Companies, Inc.
117 Id., quoting Mr. James B. Clawson.
118 Statement of Jon W. Dudas, Deputy Under Secretary of Commerce for Intellectual Property and
Deputy Director of the United States Patent and Trademark Office before the Committee on Agriculture,
U.S. House of Representatives, July 22, 2003.
119 World Trade Organization, Doha Work Programme, WTO Document No. WT/L/579, Aug. 2,
2004, at page A-7.
120 See, e.g., Sciolino, supra note 59.
Molly Torsen JPTOS
January 2005 Apples and Oranges (and Wine)..,
is not working for the French any more either; Ren6 Renou, head of the
INAO's wine section, said it was surprising "how many AOCs have
decrees that are empty of meaning, how many are not living up to their
reputation"' 12 1
That being said, GIs in general have often been reported
as playing an important role in marketing and sales, and their strength as
an intellectual property asset is significant.
C. OTHER PERSPECTIVES
The above discussions of France and the United States have focused
on the wine industry. An interesting and recent situation concerning
"spirits" sheds some light on other points of view and other products:
Mezcal and Tequila in Mexico. In another situation where international
policies are layered onto domestic laws, the North Atlantic Free Trade
Agreement bestowed legal recognition to both terms as GIs at the urging
of Mexico so that only products made in Mexico under their national
regulations may be marketed as Tequila or Mezcal in the United States
and Canada.' 22 Mezcal is an alcoholic distillation from maguey plant
leaves; its name originates from the Aztec Nahuatl word for "cooked
pineapple," since the plant has thick leaves with hard spines. 2 3 Tequila
is a distillation of only the blue agave maguey plant, whereas Mezcal is
distilled from a number of different agaves. 124 Mezcal is an AOC
controlled by the government; it can only be exported by bottle, not bulk,
but it can be distilled from any of about ten species of agave plants. 25
Tequila is Mexico's best-known AOC, as well as its first, in 1974;126 the
blue agave maguey plant from which it is distilled takes seven years to
mature and marker growth demands huge quantities.
The Mexican government is a proponent of strong GI protection for
the few AOCs it has and, given the international recognition and
consumption of Tequila, the Mexican government and its Tequila
121 Roger Voss, France'sLast-ChanceSaloon?, Wine Magazine, Aug. 2004, quoting Rend Renou.
122 Linda E. Prudhomme, The MargaritaWars: Does the Popular Mixed Drink 'Margarita' Qualify
as Intellectual Property?,4 SW. J. OF L. & TRADE AM. 109, 114 (1997).
123 Suzan Herzeg, Bryan Rund and Jim Lee, Mezcal andProtectionas a GeographicIndication,TED
Case Studies 2003, available at http://www.american.edu/ted/mezcal.htm (last visited Aug. 24, 2004).
124 Rangnekar, supra note 25 at 32.
125 Herzeg, Rund and Lee, supra note 123. See also Jorge Larson Guerra, Geographical Izdications
and Biodiversity: Bridges JoiningDistantTerritories,Feb. 2004, available at www.iprsonline.orglictsd/
docs/GeoglndicatiosnLarsonYear8-2.pdf (last visited Aug. 25, 2004).
126 See Guerra, supra note 125. See also Eduardo Orendain Giovannini, Worldwide Symposium on
Geographical Indications, July 3, 2003, at 3, available at http://www.wipo.int/meetings/2003/geoind/enldocuments/pdf/wipo-geo
sfo_03_7.pdf. (last visited Aug. 25, 2004).
January 2005 Apples and Oranges (and Wine)...
regulatory council would prefer that it remain the sole legitimate
producer. 127
As of 2003, 86 brands of false tequila had been
eliminated; 28 demonstrating the rampant frequency of GI infringement.
Strong GI protection could facilitate the eradication of similar
infringement. As the Coordinator of the Collective Biological Resources
Programme at the National Commission for the Knowledge and Use of
Biodiversity in Mexico says: "Geographical indications may underlie,
much more than we think, our long-term ability to sustain viable rural
and culturally diverse urban societies."' 29
Much like the European
Union, Mexico views AOCs and GIs as a means by which to ensure the
longevity of cultural traditions that have been developed and perfected in
various regions, as a result of that culture's individual values, traditions
and geographical uniqueness. 30
But, as shown above, perhaps the
particular mechanism in European GI laws is not so different from that
of the United States, and the real issue is a miscommunication about
what defines a GI; what qualities it should have.
IV. A BIRD'S EYE VIEW OF THE INTERNATIONAL COMMUNITY
AND GIs TODAY AND WHY A CLEARINGHOUSE APPROACH
TO AN INTERNATIONAL REGISTER MAY WORK AS AN INTERIM
SOLUTION TO HOMOGENOUS LAW
Geographical indications are currently a fascinating, if inconsistent,
area of law. Most Americans would likely have an idea of what "Swiss
cheese" is, and not expect that it comes from Switzerland, but less
ubiquitous food products, wines and spirits, such as "sherry" and
"madeira," fall into a gray area of law right now, while WTO parties try
to understand, compromise, or overpower each other. As the world's
rare and quality products become more sought after and more accessible
no matter where the buyer and seller are located, thanks to technological
advances in e-commerce, a single international choice is called for. "GIs
are widely accepted as a proof of quality, safety, tradition and know-how.
More than 80% of EU spirits and 60% of French wines exported bear a
GI."'13 1
Clearly, GIs are meaningful to some, if not all, of the
127 Giovannini, supra note 126, at 7.
128 Id., at 13.
129 Guerra, supra note 125.
130 Giovannini, supra note 126, at 17.
131 Paul Vandoren, The EU Geographical hidicationsLabeling System, Tokyo-Osaka, March 10-12,
2004, available at http://jpn.cec.eu.int/english/whatsnew/20040209-gi-vandoren.htm (last visited Aug.
25, 2004).
Molly Torsen JPTOS
international market. Inconsistencies in international labeling will lead to
consumer confusion and mistrust. As the global market becomes less
dependent on vendor locations, thanks to tools such as the Internet, it
would be in the best interest of all parties to find a reliable GI system
that would satisfy some of each party's wishes so that "Chablis" would
mean the same thing on a French menu as it would on an American
menu. As TRIPS Article 1(2) provides, GIs are a form of intellectual
property, and intellectual property deserves protection. 132
Inconsistency on the international level is not infrequent within
other intellectual property domains. The same types of issues the world
is looking at now for GIs have been true for trademarks, for example; it
would therefore be beneficial to treat GIs like other similar forms of
intellectual property that have had historical problems in international
cohesion. For this reason, the best solution for the immediate future
insofar as establishing an international register of GIs would be
something similar to the Madrid System for the International
Registration of Marks.' 33 The Madrid System, administered by the
World Intellectual Property Organization [WIPO], gives a trademark
owner the possibility to protect his mark in several countries by simply
filing one application with a single Office, in one language, with one set
of fees in one currency. 134 The advantage of this clearinghouse-type
system is that registration produces the same effects as an application for
registration of the mark made in each of the countries designated by the
applicant. If protection is not refused by the trademark Office of a
designated country within a specified period, the protection of the mark
is equivalent to having been registered by that Office. The Madrid
system also simplifies the trademark's future management, since it is
possible to record subsequent changes or to renew the registration
through a simple single procedural step with the International Bureau of
WIPO. This type of system would benefit GIs because it would compile
and disseminate information at one non-partisan office, and possibly
132 TRIPS Agreement, supra note 24, Art. 1(2): "For the purposes of this Agreement, the term
'intellectual property' refers to all categories of intellectual property that are the subject of Sections I
through 7 of Part IL"Geographical Indications constitute section
133 The Madrid Agreement Concerning the International Registration of Marks of April 14, 1891, as
last revised at Stockholm July 14, 1967 and as amended September 28, 1979. See WIPO Publication
No. 204 (E), 2002.
134 See The World Intellectual Property Organization, Madrid System, available at
http://www.wipo.int/madrid/en/ (last visited Sep. 7, 2004). The United States just joined this system in
November of 2003.
Apples and Oranges (and Wine)...January 2005
pave the way for a closer alignment of GI law since it will educate
countries as to whether and how GIs are protected in other countries.
This is the type of system the International Trademark Association
recommends as a necessary point of departure for discussing a more
legal-based system for GIs. 135 Until a better level of comprehension is
reached between the various parties through a Madrid-like system, an
iron-clad legal framework would be impractical, unmanageable, and the
current impasse between countries demonstrates that a single legal
framework in the near future would never reach consensus.
A. DIFFERENT CULTURAL AND HISTORICAL TRADITIONS
Centuries of tradition culminating in unique and sought-after
products deserve protection. As was mentioned at the beginning of this
article, the battle is not necessarily one between developing and
developed countries, but rather between the Old World and the New.
United States trademark law suffices for most United States businesses
because that is the model under which they were organized. If Napa
Valley had developed more like France's Burgundy vineyards, we might
think differently about how to protect its wines. At the time that French
winegrowers were organizing the wine industry to inaugurate the INAO,
the United States was just repealing alcohol prohibition; 136 there has
clearly been a different historical basis for the evolution of French AOCs
and American trademark-based GIs. Having seen that there is an
international standstill regarding any kind of consensus on the issue of
GIs, a compromise solution seems imperative yet elusive. The sheer
member size of the WTO would seem to indicate that a solution would
need to be feasible for countries with very different points of view on
GIs. Perhaps the middle ground could be found in an international effort
to condone and regulate GIs while at the same time finding a way to
keep GIs meaningful. If French AOCs have truly "proliferated like
aphids on a rose," 137
and if many of them have meaningless or
unenforced criteria, 38 a clearinghouse mechanism, like the Madrid
135 Burkhart Goebel, International Trademark Association, Worldwide Symposium on Geographical
Indications, July 9-11, 2003, WIPO Document WIPO.GEO/SFO/03/l I, July 4, 2003, at Annex, p. 2.
136 See U.S. Const. amends. XVIII, XXI (imposing a nationwide prohibition of all "intoxicating
liquors" in 1919 and then repealing it in 1933.)
137 Kramer, supra note 72.
138 Voss, supra note 121.
Molly Torsen JPTOS
January 2005 Apples and Oranges (and Wine)...
System, would enable the collection of data necessary to come up with
the best legal foundation for an eventual international register and
relevant processes. Whether that register would be tiered with varying
degrees of protection and how GI protection would be enforced are, of
course, vital issues that would require some level of bureaucracy and
international cooperation.
Inconsistency in international recognition of and protection for GIs
is an issue of paramount importance. The global market is becoming
more accessible to more people in more places every day, which renders
individual domestic GI and AOC laws less important because the market
for a given product is often much wider than a single jurisdiction. Case
law is inconsistent; several cases from 2003 demonstrate the lack of
coherency: In Colombia, a trademark registration for apparel called
"Saint Emilion" was rejected because Saint Emilion is a region in France
where wine is produced and has been a French AOC since 1936.139 In
Venezuela, however, the trademark "Bodegas Pomar" was applied for to
refer to vines, and accepted. France's INAO opposed the trademark
application, arguing that "Pomar" was likely to be confused with
Pommar or Pommard, AOCs in France since 1936,140 but the Venezuelan
Ministry decided that the Venezuelans would not confuse the two terms
since the Pomar trademark is widely known as the first Venezuelan
industrial grape and vine producer. On the other side of the world, a
writer from India takes a European-type attitude with regard to the
international GI situation:
Coming to the international level, at a time when further trade liberalisation is being
striven for under the purview of the WTO, it seems to be a natural corollary,
particularly in relation to the negotiations going on in the field of agriculture, that
members should be able to reap fully the advantages emanating from their GIs,
while competing in the liberalized global markets.' 41
To complicate things further, bilateral and multilateral GI
agreements, domestic law and, for the EU, Community regulations, are
often layered onto an analysis of GIs alongside the TRIPS Agreement.
139 Clifford W. Browning and Rosemarie Christofolo, editors. TRADEMARK LAW HANDBOOK
2003, Vol. Il, International, at 29. International Trademark Association. New York, NY 2003.
140 Id., at 37.
141 Kasturi Das, Geographical hidications in Jeopardy, indiatogether.org, April 2004, available at
http://www.indiatogether.org/2004/apr/eco-tradeGls.htm (last visited August 25, 2004).
January 2005 Apples and Oranges (and Wine)...
In a 1995 decision, the Court of Justice of the European Communities
decided that the terminology "m6thode champenoise" for German
sparkling wines was inappropriate since "the use of a delocalizing
designation such as 'method'...is not sufficient to prevent
consumers... from being misled as to the origin of the product and, in
any event, the designation is liable to create the impression that the
inherent qualities of the product are on a par with those of
champagne."' 42 The court referred to EEC Council Regulations in its
decision, without touching on the then-new TRIPS Agreement.
The EC has concluded several bilateral agreements referring to GI
protection; for example, agreements with Australia, Chile, Mexico and
South Africa. 43 In May of 2002, the EU adopted a set of regulations
intended to make the labels on wines produced in its member countries
more consistent and easier to understand. 44 The new rules require that
European producers include the alcoholic strength of the wine, the name
of the producer and the name of the importer on the label. European
wines exported to the United States must show this information already in
order to meet U.S. regulations. Standards have also been set for certain
other information that producers can choose to list on wines with a
geographical indication, such as varietal, vintage and sugar levels. 145
Under TRIPS, however, AOCs and definitions for many other terms still
remain the responsibility of individual member countries. The EC had a
functioning protective system for geographical indications in place
already when the TRIPS Agreement was accepted. As such, the European
Court of Justice [ECJ] works from the foundational tenets of the EC,"specifically the free movement of goods, creating and effecting a uniform
community-wide common law, agricultural policy and protection
measures, fair competition and protection of geographical indications of
origin."' 46 Unless consumers are familiar with national, regional and
142 Case C-306/93, Opinion of Mr. Advocate General Gulmann, SMW Winzersekt GmbH v. Land
Rheinland-Pfalz.
143 TRIPS and Development Resource Book, Part II. UNCTAD/ICTSD, June 2003, at 50, available
at http://www.iprsonline.org/unctadictsd/docs/2.3 GIs final June03.pdf (last visited Aug. 25, 2004).
144 Jacob Gaffney, European Union Standardizes Wine Labels, THE WINE SPECTATOR ONLINE,
May 18, 2002, available at http://www.winespectator.com/Wine/Daily/News/0, 1145,1709,00.html (last
visited Aug. 25, 2004).
145 Id.
146 Jacqueline Nanci Land, Global Intellectual Property Protection as Viewed Through the European
Community's Treatment of Geographical Indications: What Lessons can TRIPS Learn.?, II CARDOZO
J. INT'L & COMP. L. 1007, 1020 (Spring 2004).
Molly Torsen JPTOS
international policies, therefore, the required information on a given bottle
of wine will vary and inevitably cause some degree of confusion. That
variance may have nothing to do with the level of quality or government
control, but rather where the wine is from, how it is sold in that country
and how it is sold in the country of ultimate consumption. Inconsistent
protection of GIs is a barrier to efficacious international trade.
B. DIFFERENT POINTS OF VIEW ON COMPETITION LAW
Differences in perceptions of the purpose of competition law affect
the GI conversation as well. Modern United States antitrust law is often
talked about in terms of consumer welfare; i.e., it is "forconsumers and
efficiency,'' 147 For the European Community, however, the "first
objective of competition policy is the maintenance of competitive
markets.' ' 148 The EU focuses on free movement of goods and services
and the opportunity for businesses without substantial resources to
compete on the merits of their products. 149 For the ECJ, a central
foundation of the EC common law and an overarching tenet they adhere
to in deciding cases is the protection of the free movement of goods, one
of the well-known 'four freedoms' or 'pillars' of the EC. 150 Article 28 of
the EC Treaty specifically prohibits the restraint of trade movement by
disallowing restrictions on imports and all similar measures. 151 The crux
of the difference between the EU and the United States in this regard as
it relates to GIs is that GIs are often aligned specifically with trademark
law in the United States' 52 but are under the broader auspices of
industrial and commercial property rights in the EU;153 GIs therefore
have something of a sui generis law in Europe and are perhaps more
respected as a category of intellectual property in and of themselves.
147 Eleanor M. Fox, Lawrence A. Sullivan, Rudolph J.R. Peritz, editors. CASES AND MATERIALS
ON U.S. ANTITRUST IN GLOBAL CONTEXT, 2. (Thomson West, 2d ed., 2004).
148 European Community, Competition Policy Reports, XXIXth Report on Competition Policy, para
2. 1999.
149 Fox et. al, supra note 147, at 644.
150 See Schutzverband Gegen Unwesen in Der Wirtschaft E.V v. Warsteiner Brauerei Haus Cramer
Gnbh & Co. Kg, 2000 ECJ Celex Lexis 3139.
151 See Treaty Establishing the European Community, Nov. 10, 1997, Art. 28 (1997).
152 See, e.g., In re Nantucket, Inc., 677 F.2d 95 (C.C.P.A. 1982): "Geographic terms are merely a
specific kind of potential trademark, subject to characterization as having a particular kind of
descriptiveness or misdescriptiveness." Id.
153 Modem American authorities often prefer or substitute the generic title 'intellectual property
rights' to define 'industrial and commercial property rights.' See George A. Bermann, Roger J.Goebel,
William J. Davey and Eleanor M. Fox, editors, CASES AND MATERIALS ON EUROPEAN UNION
LAW, at 744. West Group, 2002.
Apples and Oranges (and Wine)...January 2005
In the United States, the Lanham Act, governing trademark law,
adopts limited recognition of the European AOC concept by providing
that terms which are primarily geographically deceptively misdescriptive
can never be registered, whether they acquire secondary meaning or
not. 154
In the EU, a system of Community registration for designations
of origin is in place and the accompanying regulations are tied tightly to
the EU's strong policy of the internal market's free movement of
goods. 155 The relevance of these differences ties in with the historical
and cultural differences of the various member nations of the WTO to
produce the stalemate in international GI policy discussions.
V. CONCLUSION
While individual domestic laws and traditions governing
geographical indications run the gamut from very specific legislation to
none at all, there seems to be a common goal in most countries to promote
the quality and uniqueness of traditional or unique products while at the
same time protecting against consumer deception. As the World
Intellectual Property Organization suggests, to summarize international
protection of GIs, "unauthorized parties may not use geographical
indications if such use is likely to mislead the public as to the true origin
of the product."' 56 I suggest that GIs and AOCs are respected as
intellectual property assets to some degree in all WTO member countries.
To truly have a workable international system, the first logical step would
be to define "geographical indication" more explicitly so that all countries
are referring to the same idea when debating the GI issue on an
international scale and to implement a clearinghouse mechanism so that
individual jurisdictions can get a flavor for the GIs, AOCs, and general
legal frameworks followed by other countries.
Insofar as definition is concerned, if a product's quality or
reputation are "essentially attributable to its geographical origin,"' 57 as
per the TRIPS definition of a GI, does that mean that only grapes grown
in Chianti soil can qualify as acceptable for the Chianti appellation? If
so, does it also mean that traditional Italian vineyard systems must be
154 Lanham Act, 15 U.S.C. § 1502 (a).
155 Bermann et. al, supra note 153, at 750.
156 See WIPO, What is a Geographical Indication?, available at http://www.wipo.int/aboutip/en/about-geographical-ind.html#P44_4428
(last visited Sep. 6, 2004).
157 TRIPS Agreement, supra note 24, Sec. 3, Art 22(1).
Molly Torsen JPTFOS
used? What if Chianti grapes are transported to South Africa? Does it
become an entirely different type of wine because of the climate? Or is
it because of the terrain? Or the winegrowers? Is sparkling wine from
Champagne, France, impossible to replicate because of the unique
combination of soil, sub-soil, climate and grape varieties? Those who
believe so cite the harshness of the northern climate, coupled with a deep
chalk sub-soil that allows easy drainage, as well as the way in which the
grape vines are planted on the vineyard slopes as evidence that a truly
unique product comes from Champagne, France, and can only come
from Champagne, France. 158
When a definition for GIs has been reached, the particulars of
various countries' systems can be analyzed within that context. Perhaps
"Montrachet," a region in France that produces pinot noirs and
chardonnays, could retain its reputation as a French AOC and therefore
an internationally-protected GI because it has not been diluted by
trademarking or genericism and because it fits into a confirmed
definition of GI for TRIPS standards. Whether "Champagne" and some
other "semi-generic" terms would be protected on the same level would
doubtless be contentious. While much work must still be done to even
broach the topic of GIs in international conversation, and discrepancies
for individual terms will doubtless arise due to the historical lack of
international cohesion on this issue, GIs can and should be recognized as
intellectual property assets that deserve a definition and a level of
worldwide protection. Individual domestic GI schemes must be studied
and understood by WTO members so that individual countries are not
talking "apples and oranges," but are capable of reaching a consensus on
what a GI means and what kind of legal system might be feasible on the
international scale. GIs need not be lost in the shuffle of trade
discussions that focus on other intellectual property protection; they
simply need to be given their due recognition as an intellectual property
right with an erratic past but a promising future.
158 See Terrior, The Office of Champagne, USA, available at hup://www.champagne.us/terroir/
champagneterior.html (last visited Sep.6,2004).
Apples and Oranges (and Wine)...January 2005