By Kaitlin Mara
World Intellectual Property Organization members last Friday set up a working group to consider improvements to an international agreement on appellations of origin – names of products reflecting particular cultural or environmental aspects of a geographic location.

Key improvements sought are a procedure for resolving situations in which nations have protection over the same or similar sounding names, and an update in the system of notifications to make the timing of deadlines more uniform.

The group will be formed to work on the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration. The 1958 Lisbon Agreement is intended to protect the names of a country, region, or locality that designate a product originating from and due to the particular cultural or environmental aspects of that country, region, or locality.

The Lisbon Agreement, according to WIPO, “offers the possibility of obtaining the protection for an appellation of origin in the 25 contracting parties to the Lisbon Agreement (i.e., in addition to the protection already existing in the country of origin) by using one single registration procedure.” Once a registration is made, WIPO notifies the contracting parties, who have one year from receipt of notification to declare if protecting the appellation will not be possible.

Appellations of origin (AOs) as defined under the Lisbon Agreement are distinct from geographical indications (GIs), as defined under the World Trade Organization Trade-Related Aspects of Intellectual Property Rights (TRIPS) agreement, in two major ways.

First, AOs must have “qualité ou caractères” – quality or characteristics – with the geographical environment of the area where the products that they designate originate, as may be determined by natural (e.g. climate, soil) or human factors (e.g. know-how), according to a WIPO official.

GIs do not necessarily have to meet such criteria, the official added. They meet the TRIPS definition whenever they have characteristics, quality or reputation attributable to the geographical origin of the products that they identify, said the official. Reputation attached to geographical origin is enough to protect a GI under TRIPS; under Lisbon, reputation must be from a product’s quality or characteristics to be worthy of protection, the official said.

At issue in the 26 September discussion at the WIPO General Assemblies was the potential establishment of a working group to look at amending the agreement, primarily focussed on issues of “partial refusal” and time-limits for refusal. “Partial refusal” is aimed at situations in which a country is willing to protect the rights of a registered appellation, but with some reservations to allow for the protection of rights on similar appellations protected under other agreements.

The time issue revolves around the fact that mailed notifications of new appellations to protect do not always get to member states at the same time, and confirmation of notification is hard to obtain. Updates to the system, including making it electronic, will be discussed in the working group.

Iran expressed reservations about possible amendments, primarily due to concern about administrative costs of a enacting changes to the treaty. Lisbon entered into force for Iran in March 2006, and the delegation was concerned about legal challenges for new members if amendments were made, according to sources. The language proposing the working group was thus changed to read “possible improvements,” rather than “amendments,” and the working group was agreed to.

Substantive Issues on the Table

The working group likely will meet in March 2009, said several sources, with a WIPO source adding it was likely that background documents would be prepared by January 2009. A forum celebrating the Lisbon Agreement’s 50th anniversary will be held at the end of October in Lisbon, Portugal; one of the themes on the provisional agenda is possible revisions to the treaty.

The issue likely to be of most interest to member states – whether party to the agreement or not – is “partial refusal.” Chile and the United States expressed concern at last week’s assemblies that changes to the treaty, or a lack of changes, could have an effect on those who were not part of the Lisbon Union. This is because there is currently no protocol for resolving potential conflicts over similar names.

A key illustration of this problem is over a beverage named pisco. Both Chile and Peru have a geographical indication for a product called pisco, a spirit made from grapes.

Chile, said Maximiliano Santa Cruz of the Chilean mission to the WTO, has negotiated several bilateral agreements that include recognition and protection for this GI, but also allow for homonymous use of the term by Peru, meaning that Peru may simultaneously have protection for pisco in those countries.

The earliest recorded use of pisco is in Peru, near the Peruvian city of Pisco that was founded around 1640, said an official from the nation. Chile’s village Pisco Elqui, the seat of its GI, got its name in 1936.

Peru holds the view that pisco is historically Peruvian, thus the appellation of origin should ideally be under the sole ownership of Peru. However, coexistence of homonymous appellations of origin is “a reality presented in the Lisbon Agreement implementation that affects us” though the nation is not pleased with the homonymy and would prefer exclusive rights, said an official.

Where the concern lies for Chile is that the Lisbon Union, to which Peru acceded recently seeking recognition of pisco, provides for exclusivity of rights and could even be interpreted as mandating the cancelling of previous rights to all new signatories, said Santa Cruz. Lisbon went into force in Peru in May 2005.

This has posed a problem both for Chile and for the nations that are part of the Lisbon Agreement and with which Chile has a bilateral agreement (or might like to strike a bilateral agreement with in the future), he added.

Because Lisbon does not establish a procedural rule for dealing with conflicting appellations of origin, “partial refusals” have been made in several countries to accommodate both Pisco claims. This happens not only as a result of Lisbon, noted a Peruvian official: where Peru and Chile have bilateral free trade agreements with the same country, “we have faced similar problems.”

The Lisbon members with which Chile has bilateral agreements notified “partial refusals” which would allow for Lisbon members to grant rights as requested under Lisbon but continue protecting the homonymous rights granted to Chile under previous agreements, said Santa Cruz. Chile supports this idea as something “in between acceptance and refusal.” Amending the Lisbon regulations would bring clarity to these situations where countries have allowed for coexistence, he said.

The Peruvian official expressed the hope that the working group would find a solution “that improves and modernises the Lisbon system.”

But the United States expressed reservations with regards to earlier-in-time trademark rights holders having to allow latecomers to claim rights in the same trademark, according to Deborah Lashley-Johnson of the US mission.

The trademark cited by Lashley-Johnson of greatest concern to the United States is Budweiser beer. There are around six notifications under Lisbon that are similar to the pre-existing trademarks of Anheuser-Busch, the US company that Lashley-Johnson said owns the trademark “Budweiser.” Every time a new country joins the Lisbon treaty, she added, Anheuser-Busch spends tens of thousands of dollars to ensure continued exclusivity over their marks in that country.

Allowing multiple claims in the same trademark undermines exclusivity and confuses customers as to the source of a product, added Lashley-Johnson. The United States therefore opposes “partial refusal.”

There are currently 25 countries in the Lisbon Union.

Kaitlin Mara may be reached at kmara@ip-watch.ch