Because of the diverse ways in which the protection of geographical indications has evolved under national laws, there is no generally accepted terminology. The following are the conventional definitions which can be found in the literature on geographical indications2:

'Indication of Source' refers to a sign that indicates that a product originates in a specific geographical region.

'Appellation of Origin' refers to a sign that indicates that a product originates in a specific geographic region only when the characteristic qualities of the product are due to the geographical environment, including natural and human factors.

'Geographical Indication' includes both of the above concepts.

For the purposes of the discussions of reform proposals in April 2001 by the TRIPS Council, the WTO Secretariat adopted the term "indications of geographical origin" to designate the different expressions used by WTO Members to protect geographical origin of products3.

In general terms, trademarks are signs, which are used in order to distinguish the goods or services of one undertaking from the goods or services of another undertaking. In the TRIPS Agreement Article 15.1 states that "Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another undertakings, shall be capable of constituting a trademark." It follows from that definition that the main function of a trademark is to distinguish the goods and/or services for which the trademark is used. Only trademarks that are distinctive can perform that function.

The TRIPS Agreement does not give any indication under what circumstances a sign has to be considered distinctive in respect of certain goods or services. However, it is commonly accepted that, in order to be considered distinctive, signs used as trademarks must not be descriptive or deceptive.

As a general proposition, geographical indications are unlikely to be considered more than descriptive. Indeed, many trademark laws both explicitly disqualify geographic marks from protection as inherently distinctive marks and provide as a defence to trademark infringement, the fact that a mark identifies a geographic area which could be understood to constitute a reference to the origin of the relevant goods. However, it may be possible to use a geographical term as trademark in cases where that trademark, despite of being originally descriptive, has acquired distinctive character (or secondary meaning) through use.

As is indicated by the discussion above, a geographical indication is a generic description which is applicable to by all traders in a particular geographic location to goods which emanate from that location. A trademark is a sign which distinguishes the products of a specific trader from those of its competitors. Thus it is not likely to be descriptive and it cannot be generic.

The right to protect a geographical indication from wrongful appropriation is enjoyed by all traders from the particular geographical location, whereas a trademark is protected from wrongful appropriation at the suit of the registered proprietor of that mark. Generally, geographic indications are monitored and protected by producer associations from the relevant region.

Unlike trademarks, geographical indications are not freely transferrable from one owner to another, as a user must have the appropriate association with the geographical region and must comply with the production practices of that region.

The first multilateral agreement, which included "indications of source or appellations of origin" as objects for protection by national industrial property laws, was the Paris Convention. Under Article 10(1) of the Paris Convention, provision is made for seizure upon importation of goods bearing false indications of the source of goods or the identity of the producer.

Under Art. 10(2), any

...producer, manufacturer, or merchant whether a natural person or 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.

Article 10bis also afforded protection against false or misleading indications of source as a means of repressing unfair competition.

Included under the definition of unfair competition are any acts which create confusion, or allegations, the use of which in the course of trade are liable to mislead the public, as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of goods.

The original form of Paris Convention prohibited the use of false geographical indications. A number of signatory nations proposed a more comprehensive form of regulation for what was considered to be a significant intellectual property abuse. The 1891 Madrid Agreement concerning the protection of geographical indications was their response. Article 1 provided that all goods 'bearing a false or misleading indication' to signatory country, or to a place in that country 'shall be seized on importation' However, this agreement failed to attract the accession of significant trading nations such as the USA, Germany and Italy. A threshold problem with this agreement and with subsequent revisions, was the inability of nations to exempt geographical indications which had become generic within their borders.

The parties to the Stresa Convention, which are some of the cheese producing countries of Europe6, "pledge themselves to prohibit and repress within their respective territorial confines the use, in the language of the state or in a foreign language, of the "appellations d'origine", denominations and designations of cheeses contrary to the principles stated in Articles 2 to 9 inclusive. The Convention, which entered into force on 1 September 1953, applies to all specifications which constitute false information as to the origin, variety, nature or specific qualities of cheeses, which are stated on products which might be confused with cheese. The term "cheese", according to Art.2.1 of the Convention is reserved for "fresh and matured products obtained by draining after the coagulation of milk, cream, skimmed or partially skimmed milk or a combination of these", or by "products obtained by the partial concentration of whey, or of buttermilk, but excluding the addition of any fatty matter to milk".

Article 3, provides that the appellations of origin of those cheeses "manufactured or matured in traditional regions, by virtue of local, loyal and uninterrupted usages" which are listed in Annex A are exclusively reserved to those cheeses, "whether they are used alone or accompanied by a qualifying or even corrective term such as "type", "kind", "imitation" or other term". Annex A lists: Gorgonzola, Parmigiano Reggiano, Pecorino Romano and Roquefort.

Annex B lists a number of designations for cheese, which are prohibited by article 4.2 for products which do not meet the requirements provided by contracting parties in relation to "shape, weight, size, type and colour of the rind and curd, as well as the fat content of the cheese". Listed in Annex B are: Asiago, Camembert, Cambozola, Danablu, Edam, Emmental, Esrom, Fiore Sardo, Fontina, Gruyére, Pinnzgauer Berkäse, Samsöe, and Svecia.

The Stresa Convention came into force prior to the EEC Treaty and its regime providing for the free movement of goods. In the Deserbais case7 the ECJ held that the EEC Treaty did not affect the duty of a Member State to respect the rights of non-member countries under the prior agreement. Similarly, in the Cambozola case8 the ECJ ruled that the free movement of goods principle was subordinated to the Stresa Convention and Council Regulation (EEC) No 2081/92 (now replaced by Council Regulation No 510/2006) permitting the registration and enforcement of rights in relation to designations of origin.

The Lisbon Agreement established an international system of registration and protection of appellations of origin. It adopted the French definition of appellation of origin by restricting the protected indications to cases in which the quality and characteristics of a product are 'due exclusively or essentially to the geographical environment, including natural and human factors'.

The Agreement provided for the registration, at the International Bureau of WIPO, of appellations of origin which are 'recognized and protected as such, in their country of origin'. Countries are thus free to adopt their own system of designating appellations, either by judicial or administrative decision, or both. Once registered, a geographic indication is protected in other member nations. The countries have to ensure that any kind of usurpation or imitation is prohibited under their laws. Finally, the Agreement, provides that no generic indication can be deemed generic in any other country, as long as it is protected in its country of origin.

The Lisbon Agreement failed to attract support from more than a few nations. One problem was that accession was confined to those nations which protected appellations of origin 'as such'. Thus, states which protected this form of intellectual property under unfair competition or consumer protection laws were locked out. Also the Agreement did not make exception for geographic indications which had already become generic in member states.

In 1975 WIPO issued a Draft Treaty on the Protection of Geographical Indications. The Draft Treaty provided for the protection both of appellations of origin and geographical indications. Unlike the Lisbon Agreement, it did not require signatories to have domestic laws for the protection of appellations of origin. In 1990 WIPO issued a memorandum asserting the continuing need for a treaty on this subject10.

In 1975 WIPO also issued a Model Law on geographical indications for adoption by developing countries. The Model Law defined 'appellation of origin' as

The geographical name of a country, region, or specific place which serves to designate a product originating therein, the characteristic qualities of which are due exclusively or essentially to the geographical environment, including natural factors, human factors, or both…;any name which is not that of a country, region or specific place is also considered a geographical name if it relates to a specific geographical area, when used in connection with certain products.

The Model Law also defined 'indication of source' as 'any expression or sign used to indicate that a product or service originates in a country or region or a specific place'. This would embrace symbols such as an Egyptian pyramid or the Eiffel Tower, as well as the birds and animals associated with a place.

The Model Law establishes a system for the registration of appellations of origin and includes an optional provision permitting national courts to determine whether particular terms are generic. Upon registration, appellations are only protected if used by producers of products carrying on business in the area described by the appellation and only if their products posses the essential characteristics associated with the appellation.

Finally, the Model Law provided that:

It shall be unlawful to use, in the course of trade, a registered appellation of origin of origin, or a similar name, with respect to the products specified in the Register or similar products, even if the true origin of the products is indicated, or if the appellation is in the form of a translation or is accompanied by terms such as 'kind', 'type', 'make', imitation', or the like.

In 1990 WIPO issued a memorandum asserting the continuing need for a treaty on this subject11. This has not been taken up by the WIPO Committee of Experts on the International Protection of Geographical Indications.

The protection of geographic indications was a key demand of European negotiators at the Uruguay Round of the GATT12. The competing positions were those of the EU and Switzerland which proposed a French-style of protection and the USA, which favoured the protection of geographic indications through a certification mark system. In the result, the Section 3 of the TRIPS Agreement covers six topics: (i) Definition and scope of a geographical indication; (ii) Minimum standards and common protection provided for geographical indications corresponding to all kinds of products; (iii) The interrelationship between trademarks and indications of origin; (iv) Additional protection for geographical indications for wines and spirits; (v) Negotiation and review of section 3 on geographical indications; and (vi) Exceptions to the protection of geographical indications.

For the purposes of the Regulation, Article 2 (1) (a) provides that:

1. designation of origin: means the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:
   
   
   1. originating in that region, specific place or country,
      
      
   2. the quality or characteristics of which are essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, and the production, processing and preparation of which take place in the defined geographical area
      
      
   3. the production, processing and preparation of which take place in the defined geographical area
      
      

Article 4 of provides:

1. To be eligible for a protected designation of origin (PDO) ... an agricultural product or foodstuff shall comply with a specification.
   
   
2. The product specification shall include at least:
   
   
   1. the name of the agricultural product or foodstuffs, comprising the designation of origin ...
      
      
   2. a description of the agricultural product or foodstuff including the raw materials, if appropriate, and principal physical, chemical, microbiological or organoleptic characteristics of the product or the foodstuff;
      
      
   3. the definition of the geographical area ...
      
      
   4. evidence that the agricultural product or the foodstuff originates in the defined geographical area, referred to in Article 2(1)(a) or (b) ...
      
      
   5. a description of the method of obtaining the agricultural product or foodstuff and, if appropriate, the authentic and unvarying local methods;
      
      
   6. details bearing out the following :
      
      
      1. the link with between the quality or characteristics of the agricultural product or foodstuff and the geographical environment referred to in Article 2(1)(a) ...
         
         
      2. the link beetwen a specific quality, the reputation or other characteristic of the agricultural product or foodstuff and the geographical origin referred to in Article 2(1) (b);
         
         
   7. the name and address of the authorities or bodies verifying compliance with the provisions of the specification and their specific tasks;
      
      
   8. any specific labelling rule for the agricultural product or foodstuff in question
      
      
   9. any requirements laid down by Community and/or national provisions.
      
      

The question of what is a registrable PDO under the previously effective Regulation 2081/92, was addressed by the ECJ in Case 12-74, Commission of the European Communities v the Federal Republic of Germany28 which concerned an application by the Federal Republic of Germany reserving the appellations 'Sekt' and 'Weinbrand' to the domestic product and the appellation 'Praedikatssekt' to wines produced in Germany from a fixed minimum proportion of German grapes. The Commission argued that the appellations 'Sekt' and 'Weinbrand' were generic appellations which the German legislature has attempted, by means of a legislative measure, to transform into indirect indications of origin as German consumers and other interested parties did not understand the appellation 'Praedikatssekt' to describe a wine produced from a fixed minimum proportion of German grapes, but merely 'Sekt' of a particular quality. It also submitted that by imposing a requirement of use of a minimum proportion of German grapes for these appellations, the legislation comprised measures having an effect equivalent to quantitative restrictions, contrary to the requirements of Article 30 of the EC Treaty.

The Court noted that the German legislation on vine products provides that the appellations 'Sekt' and 'Weinbrand' should describe products originating in the Federal Republic of Germany or coming from other countries throughout the whole of which German is an official language. It ruled that "an area of origin which is defined on the basis either of the extent of national territory or a linguistic criterion cannot constitute a geographical area capable of justifying an indication of origin", particularly as the products in question could be produced from grapes of indeterminate origin. In the case of vine products, the Court observed that the natural features of the area of origin, such as the grape from which these products were obtained, played an important role in determining their quality and their characteristics and that although the method of production used for such products may play some part in determining their characteristics, it was not alone decisive, independently of the quality of the grape used, in determining its origin.

Thus the Court concluded that it could not be shown that the products in question had a quality and characteristics peculiar to them which rendered them typically German products.

The defendant had submitted opinion polls in order to show that German consumers considered the appellations 'Sekt' and 'Weinbrand' to refer to domestic German wines. The Court rejected this as the protection accorded by the indication of origin was only justifiable if the product concerned actually possesses characteristics which are capable of distinguishing it from the point of view of its geographical origin. In the absence of such a condition this protection could not be justified on the basis of the opinion of consumers such as may result from polls carried out on the basis of statistical criteria.

The Court concluded that the German legislation on vine products involved measures having an effect equivalent to quantitative restrictions on imports contrary to Article 12(2)(b) of Regulation No 816/70.

Case T-109/9729 concerned the PDO - 'Altenburger Ziegenkäse' (goat cheese made in the Altenburg region, which must contain a minimum percentage of goats' milk), which was registered by Germany under the previously effective Regulation No 2081/92. This registration was preceded by several legislative and administrative measures in Germany. On 20 December 1993 the German authorities adopted regulations on cheese, which identified Altenburger Ziegenkäse as a designation of origin, the geographical area of manufacure manufacture corresponding to that designation comprised the districts of Altenburg, Schmölln, Gera, Zeitz, Geithain, Grimma, Wurzen and Borna and the city of Gera. The names of these districts were subsequently changed - for example, Schmölln and Altenburg became Altenburger Land - but the geographical area covered by the 'Altenburger Ziegenkäse designation remained unchanged.

Before the registration by Regulation No 123/97 of the name 'Altenburger Ziegenkäse, the applicants complained to the relevant German ministry that the German regulations on cheese had defined the area of manufacture of 'Altenburger Ziegenkäse too widely, by including in particular the district of Wurzen in Saxony, the place of establishment of the cheesemaker Zimmermann GmbH, which has since 1936 likewise manufactured a cheese sold under the name 'Altenburger Ziegenkäse. The applicants requested that the area of manufacture should be limited to the district of Altenburger Land, as the product 'Altenburger Ziegenkäse could come only from the district which had given it its name. The ministry rejected that request. The applicants complained to the Commission, asking for an action for failure to fulfil obligations to be brought against Germany under Article 169 of the EC Treaty.

The Court took the view that the German legislature was better placed than the Community legislature to define the geographical area, taking account of the particular features of production and marketing in the region. In the present case, it was for the applicants to produce, at the admissibility stage, specific evidence of disadvantage to them and they had not succeeded at national level in having the designation restricted to a smaller geographical area, namely the district of Altenburger Land. They had not produced any evidence to show that the contested provisions weakened their rights. Consequently, the application was dismissed.

Article 2(1) (b) defines a protected geographic indication to mean

the name of a region, a specific place or, in exceptional cases, a country, used to describe an agricultural product or a foodstuff:

• originating in that region, specific place or country, and
  
  
• which possesses a specific quality, reputation or other characteristics attributable to that geographical origin and the production and/or processing and/or preparation of which take place in the defined geographical area.
  
  
• the production and/or processing and/or preparation of which take place in the defined geographical area.
  
  

The question of PGIs was considered in Case C-269/9930, which concerned an application under Article 17 of the previously effective Regulation No 2081/92 from the German Government on 26 January 1994 for gherkins originating in the geographical area defined as 'the glacial valley of the Spree between the northern edge of the town of Cottbus and the Neuendorfer See, north of the town of Lübben'. Following various requests made by Spreewaldverein eV, the German authorities on several occasions amended the original application so that, finally, according to the amended specification, it sought the registration of the designation 'Spreewälder Gurken as a PGI. The geographical area was the 'territory along the Spree between Jänschwalde and Dürrenhofe and within the boundaries of an economic region determined by decisions of the local legislative bodies, called 'Wirtschaftsraum Spreewald (Spreewald economic zone), with the result that the geographical area defined in the original specification was more than doubled. During the course of the national phase of the simplified procedure under Article 17 of the previously effective Regulation No 2081/92, a number of interested third parties raised objections to the application for registration of the designation 'Spreewälder Gurken. They claimed that the special geographical and climatic conditions referred to in the application applied at most to the Spreewald, in the strict sense of the inland delta region, and not to the entire Wirtschaftsraum Spreewald, and that the processed product should not contain any raw materials from other production areas.

The defendant, Jütro, had its registered office and production facility in Jüterbog, a town outside the geographical area of the PGI 'Spreewälder Gurken. It produced, among other things, pickled gherkins called 'Jütro Gurkenfäßchen, which were distributed throughout Germany under the description 'Spreewälder Art (Spreewald style). A number of other producers of pickled gherkins brought an action in the Landgericht Hamburg seeking an order prohibiting Jütro from using the designation 'Spreewälder Art for its pickled gherkins on the ground that the use of that designation was invalid.

The Landgericht Hamburg referred to the ECJ the question whether Regulation (EC) No 590/1999 of 18 March 1999 supplementing, by the designation Spreewälder Gurken, the Annex to Regulation (EC) No 1107/96 on the registration of geographical indications and designations of origin under the procedure laid down in Article 17 of the previously effective Regulation (EEC) No 2081/92 was compatible with European Community law. It took the view that the registration procedure provided for by Article 17 of the previously effective Regulation No 2081/92 was not applicable to the designation 'Spreewälder Gurken because that designation was neither legally protected nor established by usage as a geographical indication within the meaning of that article. It was not legally protected because there was no system of formal legal protection for geographical indications in Germany. Further, the national court is of the view that registration of the designation 'Spreewälder Gurken as a PGI may have infringed Articles 2 and 4 of the previously effective Regulation No 2081/92 since the nature of the product and the expectations of consumers mean that it should have been registered as a PDO. In its view, the designation 'Spreewälder Gurken told consumers that all the gherkins came from the Spreewald proper and were, consequently, of a particular quality. Finally, the national court considered that, since the specifications relating to the geographical area did not reflect consumer expectations of a product carrying the designation 'Spreewälder Gurken, the registration of the latter as a PGI gives approval to the misleading of consumers.

The ECJ ruled that it was for the national courts to rule on the lawfulness of an application for registration of a designation. Similarly as the national court had made its own assessment, which was not tainted by a manifest error, the Commission could properly register the designation 'Spreewälder Gurken under the simplified procedure. The registration of the designation 'Spreewälder Gurken as a PGI, was because a foodstuff may be treated as originating from the geographical area concerned if it is processed or produced in that area, even if the raw materials are produced in another region.

The same principle applied to the registration of the designation 'Spreewälder Gurken for the geographical area defined in the amended specification.

Article 3 of the Regulation 510/2006 provides names that have become generic may not be registered. For the purposes of the Regulation, a name that has become generic means the name of an agricultural product or a foodstuff which, although it relates to the place or the region where this product or foodstuff was originally produced or marketed, has become the common name of an agricultural product or a foodstuff in the Community. In establishing whether or not a name has become generic, account has to be taken of all factors, in particular:

• the existing situation in the Member States and in areas of consumption,
  
  
• the relevant national or Community laws.
  
  

Where, following the procedure laid down in Articles 6 and 7, an application for registration is rejected because a name has become generic, the Commission is required to publish that decision in the Official Journal of the European Communities.

Before the entry into force of the previously effective Regulation 2081/92, the Council, acting by a qualified majority on a proposal from the Commission, drew up and published in the Official Journal a non-exhaustive, indicative list of the names of agricultural products or foodstuffs which are within the scope of the previously effective Regulation 2081/92 and regarded as being generic and thus not registerable.

The question of genericity was considered, under the previously effective Regulation 2081/92, in Cases: C-289/96, C-293/96 and C-299/96, C-465/02 and C-466/02 which concerned the use of the name 'Feta' for cheese. In July 1992, the Commission had asked the Member States to give it the names of the products which they regarded as capable of being recognised as generic names. In March 1995 it sent similar requests to the three new Member States. In the explanatory memorandum to the proposal for a Council decision drawing up a non-exhaustive, indicative list of the names of agricultural products and foodstuffs regarded as being generic, the Commission decided to adopt as possible generic names those which had been put forward by at least eight Member States. The Hellenic Republic had sought registration of 'Feta' as a PDO for "salted white cheese traditionally produced in Greece, from sheep's milk or a mixture of sheep's milk and goats' milk coming exclusively from the regions of Macedonia, Thrace, Epirus, Thessaly, Central Greece, Peloponnese and Lesbos". Although a majority of the Member States had asked the Commission to include the name 'Feta on the list of generic names which it was preparing, the Commission had concluded that 'Feta' was not disqualified from registration on this ground. The Commission had, in particular, relied on a market survey conducted in Greece, which concluded that Feta was recognised as a geographical indication in that country.

The ECJ ruled that it was not permissible for the Commission to minimise the importance to be attached to the situation existing in the Member States other than the State of origin and that account must be taken of the existence of products which are legally on the market and have therefore been legally marketed under that name in Member States other than the State of origin by which registration is applied for. Thus as the Commission did not take due account of all the factors which the Article 3(1) of the previously effective Regulation 2081/92 of the basic regulation required it to take into consideration., the ECJ ruled that the contested regulation had to be annulled to the extent to which it registered the name 'Feta' as a PDO.Following the ECJ guidelines, the Commission again made an assessment with respect to the generic character (generic name) of the name ‘Feta’, after which the name was registered as a PDO. The Commission’s decision was then sued by Germany and Denmark before the ECJ which reinterpreted Art. 3 (1) of the Regulation 2081/92, which was in force at the time and stated that the registration of the name ‘Feta’ as a PDO is compatible with the provisions of the Regulation 2081/92 (C-465/02 and C-466/02).

The Regulation 510/2006 states, in its 11 th recital, that "to qualify for protection in the Member States, geographical indications and designations of origin should be registered at Community level" and that "entry in a register should also provide information to those involved in trade and to consumers".

Articles 5 to 7 of the Regulation lay down the procedure for the registration of geographical indications and designations of origin mentioned in Art.2, which is known as the "normal procedure". According to Art.5(4), the application is to be sent to the Member State in which the geographical area is located. Under Art.5(4,5), the Member State is to check that the application is justified (and initiate a national objection procedure ensuring adequate publication of the application) and forward it to the Commission.

Under Art.8 (2) of the Regulation 510/2006, "in a case of agricultural products and foodstuffs originating in the Community marketed under a name registered in accordance with this Regualtion, the indication ”protected designation of origin” and ”protected geographical indication” or the Community symbols associated with them shall appear on the labelling”.

Designations of origin and geographical indications are protectable if they have been entered in the Register of Protected Designations of Origin and Protected Geographical Indications. The register is maintained by the European Commission (Art. 7. 6).

Article 13.1 provides that registered names shall be protected against:

1. any direct or indirect commercial use of a registered name in respect of products not covered by the registration in so far as those products are comparable to the products registered under that name or insofar as using the name exploits the reputation of the protected name;
   
   
2. any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated or accompanied by an expression such as „style”, „type”, „method”, „as produced in”, „imitation” or similar;
   
   
3. any other false or misleading indication as to the provenance, origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin;
   
   
4. any other practice liable to mislead the consumer as to the true origin of the product.
   
   Where a registered name contains within it the name of an agricultural product or foodstuff which is considered generic, the use of that generic name on the appropriate agricultural product or foodstuff is not considered to be contrary to points (a) or (b) in the first subparagraph.
   
   

A number of ECJ cases have addressed food processing and packaging as part of a PDO under the previously effective Regulation No 2081/92.

Case C-47/90 concerned the PDO "Rioja". Under Article 84 et seq. of Law No 25/70, wine produced in the La Rioja region was granted a 'denominación de origen. At that time, a Governing Council for the designation of origin Rioja was set up. By order of the Spanish Minister for Agriculture, Fisheries and Food of 3 April 199131 the rules applicable to that designation and the Rioja were approved. Article 32 of the Rioja Rules provided that wine protected by the denominación de origen calificada Rioja shall be bottled exclusively in the registered cellars authorised by the Governing Council, failing which the wine may not bear that designation and that wines protected by the denominación de origen calificada Rioja may be put into circulation and be despatched solely from registered cellars, in special bottles which do not detract from their quality or prestige and have been approved by the Governing Council. The bottles must be of glass and of a capacity authorised by the European Economic Community with the exception of one-litre bottles.

In Case C-47/90 Delhaize v Promalvin32, the Court, in response to a request from the Tribunal de Commerce (Commercial Court), Brussels, for a ruling on the compatibility with Article 34 of the Treaty of national legislation such as Decree No 157/88 and the Rioja Rules adopted under it, held that national provisions applicable to wine of designated origin which limited the quantity of wine that might be exported in bulk but otherwise permitted sales of wine in bulk within the region of production constituted measures having equivalent effect to a quantitative restriction on exports which were prohibited by Article 34 of the EC Treaty. The Spanish Government's argument that the supervisory powers vested in the Rioja Governing Council were limited to the region of production, making it necessary for the wine to be bottled in the region of production, was rejected by the Court on the ground that Regulation (EEC) No 986/89 had established a system for verifying that the authenticity of the wine was not affected during transport (paragraph 21). In 1994, the Belgian Government drew the Commission's attention to the fact that the Spanish rules at issue in Delhaize were still in force, despite the interpretation of Article 34 of the Treaty (now, after amendment, Article 29 EC) given by the Court in that judgment, and called on it to act. On 14 November 1994, the competent member of the Commission replied that the Commission considered it 'inappropriate to persist with Treaty-infringement cases. The Belgian Government and the Danish, Netherlands, Finnish and United Kingdom Governments, intervening in its support, claim that, by not amending Decree No 157/88 in order to comply with the Delhaize judgment, the Kingdom of Spain has failed to fulfil its obligations under Article 5 of the, as interpreted by the Court of Justice of the European Communities in its judgment of 9 June 1992.

The Spanish, Italian and Portuguese Governments and the Commission adduced new information to demonstrate that the reasons underlying the contested requirement were capable of justifying it. They argued that particularly in the wines sector, Community legislation displays a general tendency to enhance the quality of products within the framework of the common agricultural policy, in order to promote the reputation of those products through, inter alia, the use of designations of origin which enjoy special protection. In relation to Rioja wine, the Court accepted that its particular qualities and characteristics, result from a combination of natural and human factors that are linked to its geographical area of origin and that vigilance must be exercised and efforts made in order for them to be maintained. It accepted that the rules governing the Rioja 'denominación de origen calificada were designed to uphold those qualities and characteristics. The control over bottling was accepted as being in pursuit of the aim of better safeguarding the quality of the product and, consequently, the reputation of the designation. The Spanish Government, supported by the Italian and Portuguese Governments, and by the Commission, submits that, without this requirement, the reputation of the Rioja 'denominación de origen calificada might in fact be undermined. Transport and bottling outside the region of production would, in its view, put the quality of the wine at risk.

The court accepted that the bottling of wine is an important operation which, if not carried out in accordance with strict requirements, could seriously impair the quality of the product. Bottling does not involve merely filling empty containers but normally entails, before filling, a series of complex oenological operations (filtering, clarifying, cooling, and so on) which, if not carried out in accordance with the prescribed rules of the trade, may adversely affect the quality and alter the characteristics of the wine. It was not contested that bulk transport of wine could seriously impair its quality if not undertaken under optimum conditions. Although the Court accepted that, in the best conditions, a wine's characteristics and quality may indeed be maintained when it has been transported in bulk and bottled outside the region of production, it observed that in the case of bottling, the best conditions are more certain to be assured if bottling is done by undertakings established in the region of those entitled to use the designation and operating under their direct control, since they have specialised experience and, what is more, thorough knowledge of the specific characteristics of the wine in question which must not be impaired or lost at the time of bottling.

The Court noted that for Rioja wines transported and bottled in the region of production, the controls were far-reaching and systematic and were the responsibility of the totality of the producers themselves, who have a fundamental interest in preserving the reputation acquired and that it could be inferred that the risk to which the quality of the product finally offered to consumers is exposed was greater where it has been transported and bottled outside the region of production than when those operations have taken place within the region. Accordingly, it ruled that the requirement at issue, whose aim was to preserve the considerable reputation of Rioja wine by strengthening control over its particular characteristics and its quality, was justified as a measure protecting the 'denominación de origen calificada which may be used by all the producers concerned and is of decisive importance to them.

Case C-469/0033 concerned the PDO 'Grana Padano', which was registered for 'Cheeses'. This registration was subject to the condition that the grating of the cheese be carried out in the region of production and packaging. The defendant, imported, grated, pre-packaged and distributes 'Grana Padano' cheese in France which it marketed under the designation 'Grana Padano râpé frais'. Two Italian cheese producers brought an action against the defendant in the Tribunal de commerce de Marseille seeking an injunction and damages. The Tribunal granted both applications and on appeal the Cour d'appel d'Aix-en-Provence upheld the judgment, stating that the acts of unfair competition were sufficiently made out by the marketing in France since 1992 of 'Grana Padano' cheese in grated form. The Cour de cassation, to which the defendant appealed sought a ruling from the ECJ as to whether Article 29 [EC] was to be interpreted as precluding national legislation reserving the Grana Padano designation of origin for cheese grated in the region of production, in so far as such an obligation is not indispensable for preserving the specific characteristics which the product has acquired.

Case C-108/0134 concerned the Italian Legge No 26, tutela della denominazione di origine 'Prosciutto di Parma' (Law No 26 on protection of the designation of origin 'Prosciutto di Parma') of 13 February 1990, which reserved the designation 'Prosciutto di Parma' ('Parma ham') exclusively to ham marked with a distinguishing mark allowing it to be identified at any time, obtained from fresh legs of pigs raised and slaughtered in mainland Italy, produced in accordance with provisions laid down in the law. Article 25 of Decreto No 253, regolamento di esecuzione della legge 13 febbraio 1990, No 26 (Decree No 253 implementing Law No 26 of 13 February 1990) of 15 February 1993 prescribed that the slicing and packaging of Parma ham must take place at plants in the typical production area which are approved by the Consorzio, responsible for monitoring Parma ham production. 'Prosciutto di Parma' was registered as a PDO under Regulation No 1107/96, under the heading 'Meat-based products'. The Consorzio was registered as an inspection body for the PDO under Article 10(2) of the previously effective Regulation No 2081/92.

The case concerned the sale by Asda Stores Ltd, which operated a chain of supermarkets in the United Kingdom, of ham bearing the description 'Parma ham', purchased pre-sliced from Hygrade Foods Ltd, which itself purchases the ham boned but not sliced from an Italian producer who was a member of the Consorzio. The ham was sliced and hermetically sealed by Hygrade in packets bearing the wording 'ASDA A taste of Italy PARMA HAM Genuine Italian Parma Ham'. The Consorzio brought proceedings by writ in the United Kingdom against Asda and Hygrade seeking various injunctions against them, essentially requiring them to cease their activities, on the ground that they were contrary to the rules applicable to Parma ham.

The House of Lords sought a ruling from the ECJ as to whether the Italian legislation read with Commission Regulation (EC) No 1107/96 and the specification for the PDO Prosciutto di Parma created a valid Community right, directly enforceable in the court of a Member State, to restrain the retail sale as Parma ham of sliced and packaged ham derived from hams duly exported from Parma in compliance with the conditions of the PDO but which have not been thereafter sliced, packaged and labelled in accordance with the specification.

The Court, applying the "Rioja" case35, ruled that the previously effective Regulation No 2081/92 must be interpreted as not precluding the use of a PDO from being subject to the condition that operations such as the slicing and packaging of the product take place in the region of production, where such a condition was laid down in the specification. Although this was a measure having equivalent effect to a quantitative restriction on exports, the Court accepted that it was justified for the purpose of guaranteeing the authenticity and quality of the product, noting that Community legislation displayed a general tendency to enhance the quality of products within the framework of the common agricultural policy, in order to promote the reputation of those products through inter alia the use of designations of origin which enjoy special protection. Designations of origin, as industrial and commercial property rights, protected those entitled to use them against improper use of those designations by third parties seeking to profit from the reputation which they have acquired. It ruled that the specification of the PDO 'Prosciutto di Parma', by requiring the slicing and packaging to be carried out in the region of production, was intended to allow the persons entitled to use the PDO to keep under their control one of the ways in which the product appears on the market. This condition was justified as safeguarding the quality and authenticity of the product, and consequently the reputation of the PDO, for which those who are entitled to use it.

The Court noted that the slicing and packaging of Parma ham constituted important operations which may harm the quality and hence the reputation of the PDO if they were carried out in conditions that result in a product not possessing the organoleptic qualities expected. Those operations may also compromise the guarantee of the product's authenticity, because they necessarily involve removal of the mark of origin of the whole hams used. Consequently, the Court ruled that the condition of slicing and packaging in the region of production, whose aim was to preserve the reputation of Parma ham by strengthening control over its particular characteristics and its quality, may be regarded as justified as a measure protecting the PDO which may be used by all the operators concerned and is of decisive importance to them. The resulting restriction was therefore regarded as necessary for attaining the objective pursued, in that there were no alternative less restrictive measures capable of attaining it.

Finally, it concluded that the PDO 'Prosciutto di Parma' would not receive comparable protection from an obligation imposed on operators established outside the region of production to inform consumers, by means of appropriate labelling, that the slicing and packaging has taken place outside that region. Therefore, any deterioration in the quality or authenticity of ham sliced and packaged outside the region of production, resulting from materialisation of the risks associated with slicing and packaging, might harm the reputation of all ham marketed under the PDO, including that sliced and packaged in the region of production under the control of the group of producers entitled to use the PDO.

Under Article 173 of the EC Treaty, a natural or legal person may bring an action against a decision which, although in the form of a regulation, is of direct and individual concern to him. By registering a protected designation of origin, Regulation No 123/97 gives all economic operators whose products satisfy the prescribed geographical and quality requirements, as they appear from the specification referred to in Article 4 of the previously effective Regulation No 2081/92 and annexed to the application for registration, the right to market them under the protected name. It thus produces legal effects for categories of economic operators who satisfy the relevant conditions.

Case C-447/9836 two cheese companies objected to the adoption by the German authorities, on 20 December 1993 of regulations on cheese in which the name 'Altenburger Ziegenkäse was identified as a designation of origin and which by letter of 26 January 1994 the Federal Republic of Germany had requested the Commission to register the name as a protected designation of origin (PDO) pursuant to Article 17 of the previously effective Regulation No 2081/92. By the adoption of Regulation No 123/97, the Commission registered inter alia the name 'Altenburger Ziegenkäse as a protected designation of origin within the meaning of the previously effective Regulation No 2081/92. The appellants argued that the geographical area defined in the German regulations on cheese and the request for registration made to the Commission as the area of manufacture of 'Altenburger Ziegenkäse was too extensive. The Appeal Court sustained the decision of the court of first instance that Regulation No 123/97 concerned the appellants only in their objective capacity of undertakings producing the cheese in question in the geographical area defined in the specification and marketing it, on the same basis as any other economic operator currently or potentially in the same position and they could not therefore complain about whether other undertakings might be included in that designation.

In Case T-215/0037, the applicant producer of duck-based products, objected to the application on 5 May 1999, by the French Government of the registration as a protected geographical indication of the name canard à foie gras du Sud-Ouest, from the Association pour la défense du palmipède du Sud-Ouest. The applicant in this case objected that that the procedure for registering canard à foie gras du Sud-Ouest as a PGI had not been adequately publicised at national level and that the specifications accompanying the application for registration had nothing to do with the protection of geographical origin, particularly the requirements relating to the maximum production capacity of the structures for rearing and force-feeding ducks for foie gras and maintained that those requirements had very serious consequences for the health, hygiene and safety in the traditional small units of production.

The applicant's annual production of ducks was in excess of the limits prescribed in the French regulation and it was therefore precluded from marketing the products obtained from its ducks under the name in question. The Court ruled that this economic impact was not relevant to the validity of the PGI.

As a matter of general practice, infringement actions in relation to geographical indications concern either: (a) wrongful use of a PGI or a PDO, in which case an action will be brought by the entity responsible for preserving the integrity of the geographical indication; or (b) in relation to a misleading use of a geographical indication.

In Cases C-129/97 and C-130/97 the ECJ was requested by the Tribunal de Grande Instance, Dijon, France, for a preliminary ruling in the criminal proceedings pending before that court concerning, inter alia, whether an action lay against an undertaking which used part of a compound PDO. French legislation had provided for the registration of 'Époisses de Bourgogne' as a PDO. Two enterprises were prosecuted under this legislation for using the name 'Époisses' for its cheeses. In response to a question from the Tribunal de Grande Instance, the ECJ ruled that in relation to a compound designation of origin, the absence of a footnote in the relevant regulation specifying that registration was not sought for one of the parts of that designation did not necessarily mean that each of its parts was protected.

The question raised in Case C-87/9738, was whether a PDO "Gorgonzola (Italy)" was infringed if the packaging of the cheese designated as "Cambozola" bore a clearly visible indication of the country of manufacture (Deutscher Weichkäse [German soft cheese]), also where that cheese was as a rule not displayed and sold to consumers in the form of whole cheeses, but in pieces, sometimes without the original packaging.

The ECJ ruled that since the product at issue is a soft blue cheese which was not dissimilar in appearance to Gorgonzola, it was reasonable to conclude that a protected name was evoked, within the meaning of Article 13(1)(b) of Regulation No 2081/92, "where the term used to designate that product ends in the same two syllables and contains the same number of syllables, with the result that the phonetic and visual similarity between the two terms is obvious." In that connection, the ECJ stated that it was appropriate for the national court to take into account advertising material published by the defendant which suggested that the phonetic similarity between the two names was not fortuitous.

Case C-312/9839 concerned proceedings between the Schutzverband gegen Unwesen in der Wirtschaft eV, an association founded to combat unfair competition ('the Schutzverband), and Warsteiner Brauerei Haus Cramer GmbH & Co. KG ('Warsteiner Brauerei) concerning the use by the latter of the name 'Warsteiner on labels on bottles for certain types of beer which it brewed at a brewery in Paderborn, 40 km from the town of Warstein. The German law, the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Law on Protection of Trade Marks and Other Signs, 'the Markengesetz) of 25 October 1994, which entered into force on 1 January 1995, protected geographical indications of source. Geographical indications of source were defined to mean names of places, areas, regions or countries and other indications or signs used commercially to designate the geographical provenance of goods or services. Paragraph, 127 of the Markengesetz, provided that "geographical indications of source may not be used commercially for goods or services which do not come from the place, area, region or country which they designate, if with the use of such names, indications or signs for goods or services of other origin there is a risk of misleading as to the geographical provenance."

Warsteiner was the owner of the trade mark 'Warsteiner for 'beer of Pilsener style, registered on 24 October 1990 at the Deutsche Patentamt (German Patents Office). It was common ground that beer brewed in Warstein had no special characteristics attributable to that locality and that the beer called 'Warsteiner owed its reputation to the quality of the beer and promotion of the 'Warsteiner brand. In autumn 1990, Warsteiner Brauerei acquired a brewery located in Paderborn, 40 km from Warstein, where it brewed 'Light and 'Fresh type beers until the end of 1991. The labels on the front of the bottles for these beers bore inter alia the name 'Warsteiner or 'Marke Warsteiner (Warsteiner Brand). The back labels indicated inter alia that the beers were brewed and bottled 'in unserer neuen Paderborner Brauerei (in our new Paderborn Brewery). As it considered that those labels were misleading, the Schutzverband brought an action against Warsteiner Brauerei before the Landgericht (Regional Court), Mannheim, seeking an injunction, pursuant to Paragraph 3 of the UWG, restraining it from using 'Warsteiner as a geographical indication of source for beer brewed in Paderborn.

Before the Landgericht, Mannheim, Warsteiner Brauerei argued, inter alia, that the name 'Warsteiner was not a reference to geographical provenance, inasmuch as the locality of Warstein was largely unknown to the general public, and, in any event, the reputation of its beer did not depend on particular characteristics attributable to that locality. It also pointed out that there were other beers bearing names referring to a geographical source which did not come exclusively from the place thereby designated.

After ordering a consumer survey, the Landgericht, Mannheim, granted the injunction sought by the Schutzverband. On appeal, the Oberlandesgericht (Higher Regional Court), Karlsruhe, by order of 14 February 1996, quashed the judgment of the Landgericht and dismissed the action of the Schutzverband. It held that a market survey which had been ordered by the lower court, showed that the name at issue did not significantly mislead consumers.

The Bundesgerichtshof then observed that the prohibition on labelling a product with inaccurate information as to its geographical source was justified in order to protect competitors, so that geographical indications of source should also be protected where the source of a product has no influence on the consumer's purchasing decision. According to the Bundesgerichtshof, the protection of simple geographical indications of source provided for in Paragraph 127(1) of the Markengesetz was not subject to the condition that such indications should be familiar to the public as such, that is to say, in the case in the main proceedings, as a reference to a place called 'Warstein, but simply required that the locality indicated should not be wholly inconceivable as the place of production because of its specific character or the particular nature of the product. Nor was that protection subject to the condition that the consumer should associate particular qualities with that indication, attributable to regional or local characteristics.

Since it considered that the case turned on the interpretation of the previously effective Regulation No 2081/92, the Bundesgerichtshof decided to stay proceedings and referred to the ECJ the question whether the previously effective Regulation No 2081/92 precluded application of a national provision which prohibits the misleading use of a simple geographical designation of source, that was, an indication in the case of which there is no link between the characteristics of the product and its geographical provenance.

The Court observed that in the absence of common rules relating to the production and marketing of a product, it was in principle for the Member States to regulate all matters relating to the marketing of that product on their own territory, including its description and labelling, subject to any Community measure adopted with a view to approximating national laws in these fields. The previously effective Regulation No 2081/92 only concerned geographical indications in respect of which there was a direct link between both a specific quality, reputation or other characteristic of the product and its specific geographical origin. Thus, simple geographical indications of source where there was no link between the characteristics of the product and its geographical provenance, did not fall within that definition and were not protected under the previously effective Regulation No 2081/92. The Court ruled that this did not preclude national legislation on the subject.

The defendant in the "Gorgonzola" case40 sought to rely on its good faith defence in Article 14(2) of the previously effective Regulation No 2081/92 in that the registration of the trade mark "Cambozola" in Austria, was made in good faith before the date when the application for registration of the designation of origin was lodged. The ECJ ruled that this defence was not open because in 1983, when the trade mark 'Cambozola was lodged in Austria, the protection enjoyed there by the designation 'Gorgonzola was essentially similar to the protection guaranteed since 1996 by Community law. It observed that "the concept of good faith referred to in must be viewed in the light of the entire body of legislation, both national and international, in force at the time when the application for registration of the trade mark was lodged. However, it was for the national court to decide whether the facts of the case allowed it to find good faith.