Geographical Indications Catching Up With Appellations of Origin At WIPO

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A happy mood was in order at the close of a World Intellectual Property Organization meeting on the protection of product names indicating their origin, particular qualities and reputation. Geographical indications are being considered for the same recognition and protection as appellations of origin through the revision of a current international instrument.

Meeting Chair Miháli Ficsor, vice-president for legal affairs at the Hungarian Intellectual Property Office, hailed a “huge step forward” after the adoption of the draft summary [pdf] by the chair, with minor amendments to be added later.

The sixth session of the WIPO Working Group on the Development of the Lisbon System (Lisbon System for the International Registration of Appellations of Origin) met from 3-7 December.

The working group discussed a possible “new instrument,” which would be an amendment or revision to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration agreement to include geographical indications (GIs). Also on the agenda was a possible distinct new treaty dedicated only to GIs (IPW, WIPO, 30 November 2012).

Delegates now “widely” support the idea of “one single Draft New Instrument covering both appellations of origin and GIs, and incorporating separate definitions for each,” according to the chair’s summary.

Delegations supporting the establishment of a revision also favour a single international register covering both appellations of origin and GIs, the text says. There was wide support for “a single and high level of protection for both appellations of origin and GIs,” according to the summary.

The mandate of the working group is twofold: the revision of the Lisbon agreement “that would involve a refinement of the current legal framework and the inclusion of the possibility of accession by intergovernmental organizations, while preserving the principles and objectives of the Lisbon Agreement,” and “the establishment of an international registration system for geographical indications.” The 27-member Lisbon system currently includes an International Register of Appellations of Origin.

GIs are used to indicate that goods have a specific geographical origin from which they derive particular qualities, reputation or characteristics. They apply to wines and other agricultural products, but also other non-agricultural products such as handicrafts. Appellations of origin are a kind of GI with more restrictive conditions for attribution.

At the start of the week, delegates worked from a draft document [pdf] including three options: 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].

One of the tasks of the working group was a text-cleaning effort. In particular, Article 10 on the content and the scope of protection accorded by an international registration was one of the most important subjects of the discussions, Ficsor told Intellectual Property Watch.

A “non-paper” [pdf] – draft text for discussion – on Article 10 was issued by the WIPO secretariat, followed by a non-paper [pdf] on Art. 10 by the European Union.

Only individual countries can currently be members of the Lisbon system, so the EU is an observer to the working group.

During the week, the chair produced two successive non-papers on Article 10 and Article 11, which is on the protection of an appellation of origin or a GI against becoming a generic term or name, taking into consideration the suggestions of delegates. The first chair’s non-paper is here [pdf]. The second non-paper by the chair is attached as an annex to the chair’s summary.

One of the specific concerns of member states, Fiscor said, is how to tackle the relationship between the protection of appellations of origin/GIs and trademark rights. The discussion on this point is still “unfinished business,” he said. In particular the question about prior trademark rights that could serve as grounds to refuse the protection of an appellation of origin or a GI, he said.

Some countries are using the trademark system to protect geographical indications. The United States, for example, uses certification and collective marks, which are part of the trademark system, to protect their GIs. According to [pdf] the US Patent and Trademark Office, “geographical indications serve the same functions as trademarks, because like trademarks they are: 1) source-identifiers, 2) guarantees of quality, and 3) valuable business interests.”

Article 10 in the latest chair’s non-paper includes provisions allowing members to refuse or invalidate the registration of a trademark which contains or consists of a registered appellation of origin, under certain conditions. Some countries worry that on the basis of an appellation of origin, an earlier trademark could be invalidated, Fiscor said.

Another issue, he told Intellectual Property Watch, is whether the content of the protection should follow the current Lisbon agreement or should something new be “invented.” The current non-paper by the Chair strikes a right balance between different considerations, he said.

Part of the exercise of modifying the Lisbon agreement, and including geographical indications in the international register, was meant to attract a wider membership. Fiscor said that the revised agreement could be attractive to countries that do not have appellations of origin, but only GIs in their legislation, for example. The revised agreement allowing the participation of intergovernmental organisations would permit the European Union and the African Regional Intellectual Organization (ARIPO) to join the system, he said.

Two further meetings of the working group will be organised in 2013, one before and the other after the annual session of the WIPO General Assembly in autumn, the chair’s summary states.

Depending on progress made before the Special Union for the Protection of Appellations of Origin and their International Registration (Lisbon Union) Assembly next autumn, Fiscor said he could not “exclude the possibility” that the Lisbon Union could establish a roadmap for convening a diplomatic conference (high-level negotiation) to revise the Lisbon Agreement. One of the questions would be to decide whether only the Lisbon agreement members could vote or whether the vote would be extended to the whole WIPO membership, he said.

Amendments to Draft Summary by the Chair

Toward the end of the meeting, several amendments were made to the chair’s summary, which are not yet reflected in the document.

According to sources, in paragraph 14, the last part of the first sentence making reference to one delegation favouring a separate draft treaty on GIs has been deleted. In paragraph 15, the word “prevailing” has been added so the sentence reads as: “The Chair also noted the prevailing view of the Working Group…”

In paragraph 20, the last sentence now reads: “The Secretariat would work along the lines of the guidance provided by the working group at the present session and would make sure that all comments and suggestions be duly reflected in those revised versions.”

A sentence in paragraph 21 was rephrased to say that “the same substantive provisions would apply to both appellations of origin and geographical indications. Paragraph 23 currently under agenda item 6 (other matters) was moved under agenda item 5 (future work). This paragraph refers to a workshop on dispute settlement within the Lisbon system.

A new paragraph 24 now stands under agenda item 6, and reads: “No interventions were made under this item.” Subsequently, all remaining paragraph will be renumbered.

Finally, in the annexed Article 10 (1)(i), a double bracket was also inserted around the word “evocation.”

Catherine Saez may be reached at info@ip-watch.ch.

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