GIs Closer To International Status As WIPO Committee Recommends Treaty Negotiation

Geographical indications might rise to the same status as appellations of origin in a World Intellectual Property Organization treaty, which member states are seeking to amend in order to attract wider membership. After a week of negotiations on a draft revised treaty, member states have decided to recommend the convening of a high-level negotiating meeting in 2015 to approve the revision of the current instrument.

The WIPO Working Group on the Development of the Lisbon System on Appellations of Origin met from 29 April – 3 May. Delegates had to go through draft articles and draft regulations to provide comments and textual proposals.

Geographical indications (GIs) are currently protected under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) but wines and spirits enjoy a higher level of protection than the rest of the GIs. The WTO also has been trying to establish a GI register for a number of years without success. The revised Lisbon System would provide the same level of protection for GIs and appellations of origin (AOs). The Lisbon System also includes an international register, which would include GIs after the revision of the system.

In the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), GIs are also a standing item on the agenda, but no discussions have occurred on the subject for a number of sessions.

On the last day of the meeting, the WIPO secretariat issued a summary by the chair [pdf], which was adopted with slight modifications. “The work this week was not easy,” Chair Mihály Ficsor, vice-president of the Hungarian Intellectual Property Office, told Intellectual Property Watch, “but the result is formidable,” he claimed, with a decision to recommend a diplomatic conference.

Future Work

According to the summary, the next meeting of the working group will take place in December 2013 and will include a half-day conference on dispute settlement within the Lisbon system. During this next session, delegates will continue working on the latest version of the draft revised Lisbon Agreement and the draft regulations, the chair said.

The draft revised Lisbon Agreement is a single instrument covering both AOs and GIs and “providing for a high and single level of protection for both, while maintaining two separate definitions,” according to the summary.

GIs are place names which identify characteristics such as the origin, quality and reputation of products. AOs are a particular kind of geographical indications, usually with stricter standards.

The working group agreed that a recommendation be made to the Lisbon Union Assembly in September 2013, to convene a diplomatic conference for the adoption of the revised instrument in 2015. According to the summary by the chair, the roadmap to the diplomatic conference would include two further meetings of the working group, one in 2013 and one in the first half of 2014, and if necessary, one in the second half of 2014.

During the week, member states which are party to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, observer countries interested in following the discussions, and non-governmental observers went over most draft articles and regulations.

Some Sensitive Areas Left to Discuss

Some articles particularly fuelled discussions, such as Article 13 (Safeguards in Respect of Other Legitimate Rights) dealing with the relationship between trademarks, AOs and GIs, and possible conflicts arising in the case of prior rights. (IPW, WIPO, 2 May 2013).

After two revisions of Article 13, members states agreed to annex the second revision of the draft article, still containing brackets around areas needing further discussions, in the chair’s summary. The text will be included in the revised draft articles to be discussed in the next session in December.

Another lengthy discussion was brought up by Article 10 (Protection Accorded by International Registration). The article contains three paragraphs: Content of Protection, Presumption in Case of Use by Third Parties, and Homonymy. The third paragraph was discussed at length, as certain delegations favoured a deletion of the paragraph, while some preferred for it to be retained. In particular, the delegation of Peru wished for the paragraph to be deleted and the delegation of Chile that it remains in the text. Peru is a contracting party to the Lisbon Agreement, Chile is not yet a contracting party.

Short of an agreement, and under pain of delaying discussions, Ficsor proposed that paragraph 3 be deleted but that a footnote be added saying that nothing in the draft revised Lisbon Agreement would change the current practices under the Lisbon Agreement, he told Intellectual Property Watch. The subject will be further discussed in the next meeting, he said.

Paragraph 3 or Article 10 said that the international registration of homonymous AOs or GIs would not be prevented by the agreement, with each contracting party determining what protection to be granted.

One example of conflict is the well-known case of “pisco”, a alcoholic beverage for which both Peru and Chile have a registered geographical indication, and is still a cause of disagreement between the two countries.

The issue of homonymous appellations is the object of Article 23.3 of the TRIPS Agreement, which states that, “In the case of homonymous geographical indications for wines, protection shall be accorded to each indication, subject to the provisions of paragraph 4 of Article 22. Each Member shall determine the practical conditions under which the homonymous indications in question will be differentiated from each other, taking into account the need to ensure equitable treatment of the producers concerned and that consumers are not misled.”

Attracting New Members, Promoting the Instrument

The whole exercise of revising the Lisbon System is to attract a wider membership, as the instrument to this date comprises only 28 members.

Switzerland, which is not party to the system, told Intellectual Property Watch that it was satisfied with the progress this week. The delegate said the main points for Switzerland are that GIs are included in the system, and that the same level of protection be granted to both AOs and GIs. According to some sources, a number of other countries are now showing potential interest.

In his summary, the chair noted that the working group wished for the WIPO secretariat to “further promote the activities of the Working Group as well as the Draft Revised Lisbon Agreement and its Draft Regulations in order to raise awareness, and to stimulate discussions among the current membership of the Lisbon Union and other WIPO Member States.”