As a preliminary remark, the Community would like to underline that the protection of geographical indications foreseen in Article 22.2 of the TRIPS Agreement is provided for in Council Directive 79/112/EEC on the approximation of the legislation of the Member States on food labelling and Directive 84/450/EEC concerning misleading advertising. Article 2 of Directive 79/112/EEC provides that labelling shall not be of such a nature as to mislead the consumer, namely on the origin or source of the product. Article 3 foresees the place of origin or source as a compulsory indication on the labelling of food products, where the absence of such indication could be likely to mislead the consumer as to the true place of origin or source of the food. Article 2 of Regulation 84/450/EEC provides for a definition of misleading advertising which may result in unfair competition by reason of its deceptive nature. Article 3 considers, in particular, any information it contains concerning geographical or commercial origin as relevant criterion in determining whether advertising is misleading. Article 4 deals with the legal means Member States shall provide for the control of misleading advertising in the interest of consumers as well as competitors and the general public. The protection foreseen by these provisions under Community law and Member States' law is applicable to any WTO Member citizen without discrimination. (a)On the one hand, Council Regulation 2081/92/EEC provides for: (i)the "reputation" which is attributable to the name (geographical origin) (Article 2); and (ii)the product (which is covered by the geographical name) which complies with a specification (Article 4). This means that the Regulation has established a difference between the designation and the product. Both conditions are cumulative. On the other hand, to comply with a specification, it is important to guarantee a continuity and homogeneity of the product's characteristics which are necessary as a reference for the inspection bodies. This is essential also for the consumer. As a matter of fact, a geographical indication requires anyway that the product which is covered presents a defined description. If these conditions must be complied with by the producers established in the EC to obtain a protected designation of origin (PDO) or protected geographical indication (PGI), they must also be complied with by the third country nationals, should they wish to obtain the same protection. (b)The inspection of the conformity for the products whose geographical name has been registered as a protected designation of origin (PDO) or a protected geographical indication (PGI) is essential to ensure the credibility of the system for the consumers. This is an essential element of the Regulation. In order to obtain the same protection (Article 13 of the Regulation), if it must be complied with by the producers established in the EC, it must also be complied with by the third country nationals, to avoid discrimination. (c)Article 12 of Council Regulation 2081/92/EEC provides for the same protection in respect of products from third countries which meet those requirements. Therefore, nationals from other WTO Members are afforded treatment "no less favourable" than Community nationals, as required by Article 3 of the TRIPS Agreement. (d)Under Council Regulation 2081/92/EEC, the advantage of registration is available to the nationals of all WTO Members without any distinction. Accordingly, Council Regulation 2081/92/EEC is fully consistent with the requirements of Article 4 of the TRIPS Agreement.

The texts provided by the EC are contained in the Annex to the present document, except Annexes I and II of Council Regulation 2081/92/EEC, which can be found in document IP/N/1/EEC/G/1, as part of the text of the Council Regulation 2081/92/EEC that the EC notified to the TRIPS Council under Article 63.2 of the Agreement. 3. Are EC Regulations directly applicable law in all Member States? Which are the exceptions and what steps have these Member States taken to apply the relevant EC Regulations? Regulations (ex. Regulation 2081/92/EEC) are directly applicable law in all Member States; this means that no supplementary steps (ex. transposition by national law) are necessary to apply Regulations.

Please see the following answer from the German authorities. "In Germany, two different mechanisms for the protection of geographical indications exist: -EC-wide protection under Council Regulation 2081/92/EEC, according to which designations of origin and geographical indications for agricultural products and foodstuffs enjoy "absolute" protection (Article 13) once they are registered; and -protection against misleading use of a geographical indication. With regard to protection under Regulation 2081/92/EEC, Part 6, Chapter 2 of the German Trademark Law contains provisions dealing with purely procedural matters. The material prerequisites for protection are contained in the Regulation itself, which is directly applicable in Germany. Article 12 of this Regulation stipulates under what circumstances geographical indications or designations of origin from non-EC countries can be protected. Apart from this EC-wide protection, no system of registration of geographical indications exists in Germany. Nevertheless, German law prohibits any use of a geographical indication that is liable to mislead the public in Germany as to the true origin of the product or service. Section 127 of the German Trademark Law stipulates that geographical indications may not be used for goods or services not originating in the area indicated, if there is a danger of the German public being misled as to the geographical origin of the product. This provision is supplemented by Section 3 of the Unfair Competition Act ("Gesetz gegen den unlauteren Wettbewerb") and Section 17(1), number 5 of the Act on foodstuffs and articles of daily use ("Lebensmittel- und Bedarfsgegenständegesetz"). Both forbid misleading designations. All these provisions are also applicable to geographical indications which designate a place or an area outside Germany. They do not require any registration of the geographical indication in Germany."

The meaning of "well-known marks" under Article 8(2)(c) of Council Regulation (EC) 40/94 specially follows Article 6bis of the Paris Convention. The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. To date, the concept of "reputation" under Article 8(5) of the Regulation has not been applied in practice. Furthermore, neither Article 8(5) of the Regulation, nor any other relevant Community instrument, contain elements on the interpretation of "reputation". Nevertheless, it should be noted that "reputation" constitutes a lower threshold than "well known".

The EC considers that the criteria for establishing trademark infringement under Article 8(5) of Council Regulation (EC) 40/94 are in conformity with those set out under Article 16.3 of the TRIPS Agreement.

The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. To date, Article 8(5) of the Regulation has not been applied in practice. Nevertheless, it should be noted that the reference to "use without due cause" reflects a general principle of law, i.e. a "rule of reason". Consequently, although the unauthorized use of a sign, in principle, constitutes trademark infringement, it may on the facts be justified. The application of this principle, embodied in Article 8(5), implies that, in exceptional cases, the use of a sign which is identical or similar to a registered mark for dissimilar goods or services may be permissible, even where the other elements of trademark infringement are present. It should be stressed that, as a rule, the exception under the rule of reason will not apply. Jurisprudence at the level of the Member States has shown that a defence based on the rule of reason has never been successful. In order to successfully invoke the rule of reason, some Member State jurisdictions require that the user of the sign must prove either that he has an imperative need to use the sign and that he cannot reasonably be obliged to renounce on such use, or that such user proves that he has a right to use the sign.

Articles 15 and 50 of Council Regulation (EC) 40/94 stipulate that if, within five years following registration, the proprietor has not put the Community trademark to genuine use, the aforementioned mark shall be the subject of sanctions provided for in the Regulation. In applying Article 19 of the TRIPS Agreement, the courts or other competent authorities of WTO Members, will have to interpret the concept of "use". In interpreting this concept, they may well arrive at the conclusion that, for example, the simple advertising of the trademark, where the only objective is to prevent cancellation of the mark (on the ground of failure to use), does not constitute "use" within the meaning of Article 19 of the TRIPS Agreement. In view of this, the reference to "genuine" use in the said Articles of the Regulation constitute an indication as to how the concept of "use" must be interpreted under Community law.

Since the concept of "genuine use" is laid down in Community law (Articles 15 and 50 of the Council Regulation (EC) 40/94), it is for the European Court of Justice to give a final and binding interpretation of that concept. A uniform application of the concept will, therefore, be ensured for the whole territory of the European Union. As the EC and Member States have indicated in their answer to initial question 4 from Japan, the adjective "genuine" is not intended to qualify the concept of "use" as laid down in Article 19.1 of the TRIPS Agreement, but merely indicates that, where the mark is only used in an artificial manner, only with a view to avoid cancellation of the mark on the basis of non-use, such use shall not be considered to constitute "use" in the sense of Article 19.1 of the TRIPS Agreement.

Council Regulation (EC) 40/94 became operational on 1 April 1996. Thus, no Community trademarks exist prior to the entry into force of the WTO Agreement. The First Council Directive on the approximation of the laws of the Member States relating to trademarks (89/104/EEC) has not been modified following the entry into force of the WTO Agreement. As a result, no new provisions have been introduced into the Directive which would oblige the Member States to prejudice eligibility for, or the validity of, the registration of a trademark, or the right to use a trademark, on the basis that such a trademark is identical with, or similar to, a geographical indication, where such a trademark existed prior to the entry into force of the WTO Agreement. Moreover, Article 40, paragraph 3, second indent of Council Regulation (EEC) 2392/89 (as amended by Council Regulation (EEC) 3897/91) concerning description and presentation of wines and grape musts envisage that the holder of a well-known registered brand name for a wine or a grape must which contains wording that is related to geographical indications may continue to use that brand name if: -it corresponds to the identity of its original holder or of the original provider of the name; and -the brand name was registered at least 25 years before the official recognition of the geographical name in question by the producer's Member State and it has actually been used without interruption. The same rule applies to sparkling wines (Article 13, paragraph 3 of Council Regulation (EEC) 2333/92). As regards geographical indications and designations of origin for agricultural products or foodstuffs registered under Council Regulation 2081/92/EEC, the provisions of Article 14, paragraphs 2 and 3 apply with regard to trademarks existing prior to the registration. Under Article 14(3), a designation of origin or a geographical indication shall not be registered where, in light of the trademark's reputation and renown and the length of time it has been used, registration is liable to mislead the consumer as to the true identity of the product. Under Article 14(2), use of a trademark corresponding to one of the situations referred to in Article 13 of Regulation 2081/92 (usurpation, imitation, direct or indirect evocation, etc.) in relation to a registered geographical indication or designation of origin is permitted under the following conditions: -The trademark was registered in good faith before the date on which application for registration of a designation of origin or geographical indication was lodged; -It can be demonstrated that the use of the trademark could be done in conformity with Community law; -It cannot be demonstrated, at the time of registration of the trademark, that there are the following grounds for invalidity or revocation as provided by Council Directive 89/104/EEC on the approximation of the laws of the Member States relating to trademarks, i.e.: -the trademark is exclusively an indication of geographical origin (Article 3(1)(c)); -the trademark is of such a nature as to deceive the public as to the geographical origin of the product (Article 3(1)(g)); -as a consequence of the use made of it by the proprietor of the trademark, or with his consent, the trademark is liable to mislead the public, particularly as to the geographical origin of the product (Article 12(2)(b)).

Article 18 of the TRIPS Agreement requires that initial registration of a trademark shall be for a term of no less than seven years. Article 46 of Council Regulation (EC) 40/94 provides that Community trademarks shall be registered for a period of ten years from the date of filing of the application. This implies that a Community trademark shall indeed be registered for a period of ten years, which is even longer than the minimum period of registration laid down by the TRIPS Agreement. As regards the effective term of protection for a Community trademark, the second sentence of Article 9(3) of the Regulation specifies that reasonable compensation may be claimed in respect of matters arising after the date of the publication of a Community trademark application, if such matters would, after publication of the registered mark, be prohibited by virtue of that publication.

Article 46, first sentence, of Council Regulation (EC) 40/94 provides that "Community trademarks shall be registered for a period of ten years from the date of filing of the application". Article 18, first sentence, of the TRIPS Agreement provides that "Initial registration, and each renewal of registration, of a trademark shall be for a term of no less than seven years". Thus, the EC fully complies with its obligations under Article 18 of the TRIPS Agreement. In this respect, it should be noted that the latter Article does not refer to a "term of full protection", as referred to by Japan, but only to the duration of the term of the registration as such.

Article 4 of the Council Regulation (EC) 40/94 is in conformity with the relevant provisions of Article 15 of the TRIPS Agreement. According to Article 4 of the Regulation, any sign which is capable of distinguishing the goods or services of one undertaking from those of another and which is capable of being represented graphically, may constitute a Community trademark. The listing of certain types of signs of which a trademark may consist, contained in Article 4 of the Regulation, is not exhaustive, but merely contains examples of such signs. Thus, the Article does not rule out the possibility of registering as a trademark a combination of colours or a single colour, provided that they are capable of distinguishing the goods or services of one undertaking from those of another undertaking.

(a)The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. To date, Article 7(1)(g) of the Regulation has not yet been applied in practice. Nevertheless, is should be noted that, according to the said provision, the decisive element is whether the trademark concerned is of such a nature as to deceive the public. This is in accordance with the relevant provisions of the Paris Convention. In practice, the question of whether a given trademark unduly indicates a connection to a WTO Member to the extent that it deceives the public, will depend on the circumstances of the case. In this respect, the goods or services for which the trademark is used may also play an important role. (b/c)It follows logically from Article 7(3) of Council Regulation (EC) 40/94 that, even where a trademark has become distinctive, this would not enable its registration if Article 7(1)(g) of the Regulation applies.

The Community trademark system, established by Council Regulation (EC) 40/94, became operational on 1 April 1996. To date, Article 7(1)(f) of the Regulation has not yet been applied in practice. The concept of "contrary to public policy or to accepted principles of morality" is in accordance with the relevant provisions of the Paris Convention. As to the concept of "public policy", it should be noted that the French text of Article 7(1)(f) of the Regulation refers to "contraire à l'ordre public" (contrary to the public order), which reflects in a somewhat clearer way what is meant by this concept. Examples of trademarks which might be classed under this concept, could be words or images which are offensive, such as swear words or racially derogatory images, or those which are blasphemous.

A. Wines and spirits Council Regulation (EEC) 823/87 lays down the conditions which must be respected by Member States for the recognition of quality wines produced in specified regions (quality wines psr). The provisions of the Regulation concern in particular the following: demarcation of the area of production; vine varieties; minimum alcohol content; yield per hectare; analysis and assessment of organoleptic characteristics, etc. (Article 2). Member States adopt the specific provisions and recognize the geographical indications of the wines produced in their territory (Article 3.1). The Commission is responsible for the publication of all the geographical indications recognized by the Member States. Council Regulation (EC) 3290/94, Annex XVI, modifies Council Regulation (EEC) 822/87, which establishes a common market organization for wine, by adding Article 72a, which implements Article 23.1 of the TRIPS Agreement. For spirit drinks and aromatized wines, Article 5 of Council Regulation (EEC) 1576/89 and Article 6 of Council Regulation (EEC) 1601/91 respectively lay down the rules concerning the use of geographical indications in relation to spirit drinks or aromatized wines from the Community, the list of which is in annexes to these Regulations. Regulation (EC) 3378/94 has modified the provisions concerning spirits and aromatized wines. It modifies the above-mentioned Regulation 1601/91, which lays down rules for the definition, description and presentation of aromatized wines, by adding Article 10a, which implements Article 23.1 of the TRIPS Agreement. It also modifies the above-mentioned Regulation 1576/89 on the description and presentation of spirit drinks, by adding an Article 11a, implementing Article 23.1 of the TRIPS Agreement in respect of spirits. In the context of the implementation of the WTO Agreement, Council Regulation (EC) 3288/94 has amended Council Regulation (EC) 40/94 on the Community trademark. In particular, to Article 7(1) of Regulation 40/94 which lays down the absolute grounds for refusal of registration of a trademark, a paragraph is added to the effect that geographical indications for wines and spirits shall be refused registration if the wines and spirits do not have that origin. B. Other geographical indications in relation to agricultural products and foodstuffs Council Regulation 2081/92/EEC sets out the procedure for the registration of geographical indications in the Community territory. The procedure contained in Articles 5, 6 and 7 is as follows: 1.A group of producers must submit a detailed application for registration to the competent authority of the Member State, in accordance with the conditions specified in the Regulation. 2.If the application is considered to be in conformity with the Regulation, it shall be referred to the Community authorities, who will verify that the conditions of the Regulation have been formally satisfied and will publish the application in the Official Journal to allow other parties the opportunity to raise objections. 3.If an objection is raised, the final decision on registration is taken by the Commission and the Member States. The Member States are responsible for controlling the application of the Regulation. The protection granted by the Regulation is ex officio, that is to say that the Member States have a duty to ensure that each registered geographical indication or designation of origin is protected against any encroachment taking place within the EU. As for the protection of geographical indications of WTO Members, it is necessary to distinguish the following situations: 1.The protection pursuant to Article 22 of the TRIPS Agreement, which is guaranteed by the Member States' application of Council Directive 79/112/EEC concerning labelling (prohibition to mislead the public). In the event of a problem relating to a geographical indication of a WTO Member, the EC Member States must also ensure the possibility for the operators concerned to take legal action in their courts. 2.The ex officio protection pursuant to the above-mentioned Regulation 2081/92, for which either: -the procedure followed by Community producers as outlined above must be followed, in accordance with the principle of national treatment; or -a bilateral agreement should be concluded as envisaged in Article 12, when the system of protection is equivalent to the Community regime. C. Other geographical indications These are protected against misleading advertising under Council Directive 84/450/EEC relating to the approximation of the laws, regulations and administrative provisions of the Member States concerning misleading advertising. Article 3 of the Directive provides that, in determining whether advertising is misleading, account shall be taken in particular of any information it contains concerning the characteristics of goods or services such as [...] geographical or commercial origin. According to Article 4 of this Directive, Member States shall ensure that adequate and effective means exist for the control of misleading advertising.

Spain recognizes a right of priority based on a trademark application filed in or for Spain that claims such a right on the basis of a prior application filed in any WTO Member. Justification: The Union right of priority (Article 4 of the Paris Convention) has been incorporated in the TRIPS Agreement by implication, according to Article 2.1 of the Agreement, and consequently applies to all nationals of WTO Members, who are granted the treatment provided for in Article 1.3 of the Agreement, which by implication includes the Union right of priority. Moreover, pursuant to the most-favoured-nation clause (Article 4 of the TRIPS Agreement), nationals of WTO Members must be granted the same advantages as those granted to the nationals of any other country, in this particular case the right of priority recognized to nationals of States belonging to the Paris Union.

Yes, it is true that Article 2 of the Spanish Trademark Law does not include "combinations of colours" among the signs capable of constituting a trademark, unlike Article 15.1 of the TRIPS Agreement. However, in both instances, the enumeration of signs capable of constituting a trademark is open-ended and is not exhaustive. Actually, the list in Article 2 of the Spanish Trademark Law starts with the word "especially", and it may therefore be said that a combination of colours could also be considered as a trademark. Moreover, the list of registrable signs in Article 15.1 of the TRIPS Agreement is also illustrative and starts with "in particular". The TRIPS Agreement and the Spanish Trademark Law also coincide in that colour in itself is not protectable, since a monopoly might be conferred on such scarce goods as pure colours. The difference between the two texts lies in the approach to the prohibition. Whereas the Spanish Trademark Law rejects a trademark on "colour in itself" (Article 11.1(g)), the TRIPS Agreement affirms the protectability of colour combinations. These are two sides of the same coin, with the same underlying reasoning. Furthermore, the prohibitions on registration contained in Article 11 are interpreted restrictively by examiners and judges.

The reasons justifying the non-use of a mark are assessed by the courts. The Spanish Trademark Law, unlike the TRIPS Agreement, does not establish specific criteria for reasons justifying non-use. However, in practice, the reasons are fully in keeping with the criterion of force majeure set out in the TRIPS Agreement (Article 19, second sentence), in other words, circumstances arising independently of the will of the owner of the trademark which constitute an obstacle to use of the trademark.

Article 16.1 of the TRIPS Agreement, first sentence, fully coincides with Article 31.1 of the Spanish Trademark Law. The requirement to exercise jus prohibendi lies in the fact that the use "may be misleading" (Article 31.1 of the Spanish Trademark Law) or "result in a likelihood of confusion" (Article 16.1 of the TRIPS Agreement). The difference between the two texts is that the Spanish Trademark Law does not give any example of what is misleading. The TRIPS Agreement indicates that there is a likelihood of confusion when the signs for identical goods or services are identical. This "double identity" criterion is followed in Spanish registration and judicial practice, whereby two identical signs for identical goods or services are considered incompatible. The legal foundation for this practice is an a contrario interpretation of Article 12.2 of the Spanish Trademark Law. Thus, Article 12.2 allows the registration of trademarks similar to others registered previously in order to distinguish similar goods or service, with the authorization of the previous right owner. On the other hand, when the signs are identical and the goods or services also coincide, the practice followed - on the basis of Article 12.2 of the Spanish Trademark Law - does not allow registration.

Protection of a well-known mark is approached in the Spanish Trademark Law from two angles. First, Article 13(c) prohibits the registration of "signs or media which involve improper utilization of the reputation of other registered signs or media". Furthermore, Article 35 establishes that "the owner of a registered trademark may bring before judicial bodies any appropriate civil or criminal action against any one who injures his rights and may demand the necessary measures to safeguard them". The possibility also exists of protecting a well-known mark under the Unfair Competition Act of 10 January 1991. Specifically, the use of a well-known mark may be included among misleading acts that involve the risk of association (Article 6) and among acts that exploit the reputation of someone else, as unfair utilization of distinctive signs (Article 12).