WIPO Members To Decide On GI Protection: Revised Agreement Or New Treaty?

For most people, champagne evokes a sophisticated bubbly white wine, associated with luxury and celebration. Champagne is also a region of France where this particular wine originates. The protection of geographical indications, such as champagne, but also Darjeeling tea or Idaho potatoes, is being discussed in several fora, and next week at the World Intellectual Property Organization.

The sixth session of the Working Group on the Development of the Lisbon System (Lisbon System for the International Registration of Appellations of Origin) is meeting from 3-7 December to discuss a possible amendment to the system to include geographical indications (GIs), or a possible distinct new instrument to protect those indications.

GIs are signs used to indicate that goods have a specific geographical origin from which they derive particular qualities, reputation or characteristics. They apply to wines, such as Bordeaux wine, agricultural products, such as Jamaica Blue Mountain coffee, or Kona Coffee from Hawaii, but also to other products, such as the Gobi Desert camel wool, from Mongolia. Appellations of origin are a kind of geographical indication with more restrictive conditions for attribution.

The working group was established in 2008 by the Lisbon Union Assembly to explore possible improvements to the procedures under the Lisbon Agreement. Since 2009, the working group has engaged in a “full review” of the Lisbon Agreement involving the possible extension to GIs in addition to appellations of origin, according to WIPO.

In particular the working group has been tasked with looking for improvements of the Lisbon System to make it more attractive to states and users, while preserving the principles and objectives of the Lisbon Agreement. Only 27 countries are currently members of the Lisbon Agreement.

The working group has a two-fold mandate, the first is the revision of the Lisbon Agreement and the refinement of its current legal framework, and the second is the establishment of an international registration system for GIs.
Based on member state feedback, on the table of the session next week is a draft new instrument [pdf] on appellations of origin and GIs, including the revised Lisbon Agreement, a draft protocol on geographical indications supplementing the revised Lisbon Agreement, and a draft treaty on geographical indications. Also on the table are draft regulations [pdf] under the draft new instrument.

A revision of the Lisbon Agreement can be concluded by the members of the Lisbon Agreement. If the option of a new treaty is chosen, the WIPO General Assembly will have to decide on the convening of a diplomatic conference (high level treaty negotiation) for that purpose.

According to the draft report [pdf] of the Special Union for the Protection of Appellations of Origin and their International Registration (Lisbon Union) Assembly, which met from 1-9 October, the working group “had not yet been in a position to recommend: (i) when a diplomatic conference might be convened; and (ii) whether its work should result in a revised Act of the Lisbon Agreement, a protocol supplementing the Lisbon Agreement or an entirely new treaty.”

According to this week’s meeting documents, the mandate of the working group is to work “towards the establishment of an international registration system for both geographical indications and appellations of origin. Furthermore, the prevailing view in the Working Group is that the minimum level of protection in respect of international registrations should be ambitious and the same for both geographical indications and appellations of origin.”

Working group meetings are open to Lisbon members as well as other WIPO members, intergovernmental organisations and non-governmental organisations.

Proponents of GIs have traditionally been European countries, which hold a large number of them. For example, according to a document published by the International Trade Centre, only 10 percent of the world’s protected GIs come from developing countries, while over 90 percent of the 10,000 protected GIs in the world come from countries which are members of the Organisation for Economic Co-operation and Development (OECD) – the world’s richest. Recent developments seem to indicate that some developing countries are gaining interest in protecting GIs.

GIs are also being discussed in other fora. The WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) has a standing agenda item on the subject, although the item has not been discussed at all in recent sessions. GIs are also the subject of strong discussions at the World Trade Organization in the context of the sessions of the Council on the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (IPW, IP-Watch Briefs, 20 March 2012).

One of the arguments of countries reluctant to establish an international register of GIs is that some names that are protected in one country or region, have a common usage in another country or region. Those countries consider that these names have become generic names in the marketplace, and as such should not relate to a single specific geographic location of production.

GI Advocates Favour Lisbon Amendment

The Organization for an International Geographical Indications Network (OriGIn), an industry group which is an observer at WIPO and participating in the working group, represents 350 associations. OriGIn advocates for a “more effective legal protection and enforcement of GIs at the national, regional and international level and promotes the recognition of the fundamental role of origin products in sustainable development.”

OriGIn told Intellectual Property Watch that the organisation favours a modification of the existing Lisbon Agreement rather than a separate new instrument on GIs. In a November comment [pdf] to the draft meeting documents, they said “we understand that a two-fold mandate was given to the Secretariat. However, while the introduction of the concept of GI in the Lisbon System is extremely positive, we do not believe that [either] a Protocol [or] a new Treaty is justified to achieve this goal.”

“In light of the fact that a single and ambitious level of protection for both AO [appellations of origin] and GIs has been agreed upon, we do not see any obstacles to introducing the concept of GI in the revised Lisbon Agreement itself,” they said, adding that some geographical indications had “de facto been registered under the current Lisbon Agreement and that no refusal was expressed by Contracting Parties on the basis of the definition.”

“Introducing the concept of GI in the revised Lisbon Agreement would rather reflect a need of transparency, legal certainty and predictability,” OriGIn argued. “In this respect, resorting to a Protocol/new Treaty does not appear to be justified,” they said.

OriGIn is working on an online compilation of all GIs currently protected in the world. In November, the Swiss Federal Office for Agriculture joined the group of donors supporting the project, according to a release [pdf].

On 26 November, the European Commission and African Regional Intellectual Property Organization (ARIPO) signed a non-binding memorandum of understanding to work together on promoting GIs (IPW, IP-Watch Briefs, 27 November 2012).