GIs Rub Against Trademark Protection In WIPO Discussions On Protection

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Cognac, porto and tequila are appellations of origin protected under an international agreement managed by the World Intellectual Property Organization. Members of this agreement are seeking to modify it so it attracts a wider membership, in particular by including geographical indications. The exercise, however, is a complicated one as the new agreement has to be in tune with other international agreements, notably the World Trade Organization agreement on intellectual property.

The WIPO Working Group on the Development of the Lisbon System on Appellations of Origin is meeting from 29 April – 3 May. The working group is seeking to revise the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. The exercise was undertaken with a primary goal to attract new members to the system. The Lisbon agreement currently has 28 members. Serbia Herzegovina, the latest addition to the list, acceded to the instrument on 4 April, with an entry into force on 4 July 2013.

Opening the session, WIPO Director General Francis Gurry said that a possible path for the working group is the convening of a diplomatic conference (a high-level negotiation) in the second half of 2014 or in 2015 to modify the Lisbon agreement. The decision, he said, depends on progress achieved during this week. To convene a diplomatic conference, a recommendation needs to be made to the Lisbon Union Assembly meeting from 23 September – 2 October during the WIPO General Assemblies. If not enough progress is made this week, he said, a recommendation would have to be made in 2014 for a diplomatic conference in 2015.

At the last session of the working group, from 3-7 December, the WIPO secretariat was requested to produce a draft revised agreement, “that would take the form of a single instrument covering both appellations of origin and geographical indications and providing for a high and single level of protection for both, while maintaining separate definitions, on the understanding that the same substantive provisions would apply to both appellations of origin and geographical indications,” according to WIPO (IPW, WIPO, 7 December 2012).

The working group this week has thus been discussing the Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications [pdf] and the Draft Regulations Under the Draft Revised Lisbon Agreement [pdf].

In its opening statement, the European Union underlined the need for the revised Lisbon Agreement to be compatible with the WTO Agreement on Trade-Related Aspect of Intellectual Property Rights (TRIPS), taking into account the Doha Development Agenda negotiations.

The Doha Ministerial declaration from which stem those negotiations, underway since 2001, allows in paragraph 18 discussions on the establishment of a multilateral system of notification and registration of geographical indications for wines and spirits. It states that the extension of the protection of geographical indications other than wines and spirits to the level granted to the latest should be addressed in the Council for TRIPS. Discussions in the TRIPS Council have been stalled on this subject for years.

An important difference between the negotiations taking place at WIPO and those at the TRIPS Council is that proponents of an international GI register in the WTO are seeking a mandatory participation in such a register by all WTO members, while accession to the treaty that the working group is negotiating would be voluntary.

Australia, an observer to the meeting since the country is not party to the Lisbon agreement, said that the current provisions of the draft revised agreement either strengthened or retained provisions that were already unattractive to many countries in the original Lisbon agreement. Some of the provisions, the delegate said, are sometimes “out of step with established IP principles and incompatible with the protection of geographical indications in many countries, including Australia.”

In a number of countries, GIs are protected through trademarks, such as in the United States with certification marks.

When GIs Meet Earlier Trademarks

Among the main issues being addressed this week are how to deal with earlier trademarks, when conflicts arise between a registration of an AO or a GI and earlier trademarks in member countries. Another is how to address AO or GIs that have been used as generics in member countries. Under the current agreement, when a country registers an AO, the registration is notified to all other members of the Lisbon agreement, which have one year to decide not to protect the AO for reasons on which they have to provide grounds, according to WIPO.

Those issues are the main concern of Article 13 (Safeguards in Respect of Other Legitimate Rights), which deals with prior trademarks, and Article 17 (Prior Use). Article 13 was discussed several times during the week.

Members and observers had lengthy discussions on the subject without finding consensus on provisions of Article 13 or 17 that would be agreeable to all. On 1 May, the WIPO Secretariat issued a non-paper [pdf] with a new proposed version for Article 13. Most delegates on 1 May said the language of the article was much clearer but said more drafting work remained to be done, and provided comments for consideration by the WIPO secretariat for a second draft of Article 13. A revised version [pdf] was produced on 2 May, which was agreed upon by delegations, re-elected Chair Mihály Ficsor, vice-president of the Hungarian Intellectual Property Office, told Intellectual Property Watch.

The document is expected to be annexed to the summary by the chair to be issued on the last day of the meeting, to be later included in a new version of the draft articles, he said.

The revised Lisbon Agreement has been drafted in conformity with trade obligations of countries under the TRIPS. In particular, the issue of conflicts with GIs and prior trademarks is addressed in particular in TRIPS Article 24.5.

Article 24.5 states that: “Where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: (a) before the date of application of these provisions in that Member as defined in Part VI; or (b) before the geographical indication is protected in its country of origin; measures adopted to implement this Section shall not 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.”

Article 17 of TRIPS is also relevant, said the WIPO secretariat. Article 17 deals with limited exceptions to the rights conferred by a trademark, such as fair use of descriptive terms.

Ficsor told Intellectual Property Watch that during the week, the working group went through all draft articles and regulations “that might represent a problem,” with successful outcome.

 

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

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