Plurilateral Agreement On Geographical Indications On Its Way At WIPO

Last week, WIPO members that are parties to a special agreement on the protection of appellations of origin agreed to convene a diplomatic conference in 2015 to adopt a revision of the 1958 Lisbon Agreement. The revised treaty would extend to all geographical indications the protection already granted to appellations of origin. The decision to convene a diplomatic conference, however, stirred up controversy with a number of WIPO members that are not parties to the treaty.

The Lisbon Agreement on the Protection of Appellations of Origins is an international legal instrument administered by WIPO, with 28 members. The agreement aims at protecting appellations of origin in all contracting parties through an international registration system. However, parties to the Lisbon Agreement can refuse such protection if, for example, the appellation of origin is already present in a protected trademark in their territory.

In addition, the subject matter of the treaty is limited to appellations of origin, a special kind of geographical indication attached to products “the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.” Specifically, appellations of origin are subject to stricter criteria than other geographical indications that usually require only one production phase to be performed in a specific area.

On 27 September, WIPO members that are parties to the Lisbon Agreement endorsed a roadmap towards the approval of a revised version of the Lisbon Agreement that would update and redefine the protection mechanism set up by the Lisbon treaty. The roadmap was recommended by a working group that has engaged in a full review of the Lisbon system since 2008 with a view to making the agreement more attractive for users and prospective new members, while preserving the principles and objectives of the Lisbon Agreement.

The work plan envisages two additional sessions of the working group before a diplomatic conference is convened in 2015, a first meeting to be held in December and a second meeting in the first half of next year.

During last week’s discussion, Portugal offered to host the diplomatic conference, but other candidacies may be put forward in future sessions of the working group, some sources said.

According to the recommendation adopted by the members of the Lisbon treaty, “work will continue towards 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 two separate definitions, on the understanding that the same substantive provisions would apply to both appellations of origin and geographical indications.”

Although negotiations are still under way on a number of issues, including scope of protection and safeguards, the current draft text of the revised agreement presents some new features compared to the original Lisbon Agreement. For example, it would introduce the notion of “reputation” in the definition of geographical indications and appellations of origin, clarify the concept of “geographical area of origin,” and allow for the registration of trans-boundary geographical indications.

In addition, the draft revised text would address the relationship between geographical indications and prior rights.

“The first reason to set up the working group was to clarify whether the system allowed for the coexistence for two appellations of origin that happen to have the same name,” [corrected] a source close to the negotiations told Intellectual Property Watch.

The outcome text of the last Lisbon working group meeting states: “For example, in case an appellation of origin or geographical indication registered under the Revised Lisbon Agreement would conflict with a prior trademark, the provision would result in a situation of co-existence, according to the current draft, except in a member that decides that in its territory the prior trademark should prevail. Under the current system, a member could decide that use under a prior trademark must be terminated.” [corrected]

Finally, the revised text would permit international organisations, such as the European Union and the African Organization for Intellectual Property (OAPI), to accede to the agreement.

Additional information on the negotiations can be found on the WIPO website here.

A number of members of the Lisbon Union, the governing body of the Lisbon Agreement, praised the decision to convene a diplomatic conference.

Serbia said the approval of the amendment would lead to “a significant improvement and simplification of the system. Hungary claimed that the future amendment is a “bright example of how intellectual property rights can meet the special needs of developing countries.” In the same vein, Iran stated that “if approved, [the revised treaty] would be of great importance for developing countries.”

Massimo Vittori from oriGin, a non-profit organisation advocating for a more effective protection of GIs, welcomed last week’s decision and claimed that the introduction of GIs in the Lisbon agreement “will allow several countries that do not provide for the protection of appellations of origin, but only for the protection of geographical indications, to be part of the system.”

“The current level of protection provided by the Lisbon agreement gives strong legal protection and it’s very good that it might be extended to geographical indications,” he added.

‘New World’ Countries Object to Diplomatic Conference

Several WIPO members not parties to the Lisbon Agreement opposed the convening of a diplomatic conference. The United States, which is an observer to the Lisbon Agreement, “strongly object[ed] to the convening of a diplomatic conference,” claiming that the “inclusion of geographical indications in the Lisbon Agreement is inappropriate.”

“The inclusion of GIs [geographical indications] is not a procedural improvement, but rather it is an expansion of subject matter which is out of the mandate of the working group that was set up to explore possible improvements of the procedures under the Lisbon agreement,” the US argued. “Adding GIs to the Lisbon Agreement may also prejudice current negotiations at the World Trade Organization and conflict with existing provisions of the TRIPS agreement.”

Notably, the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) mandates two different levels of protection for geographical indications. Specifically, it provides a stronger protection for wines and a lesser protection standard for all other geographical indications. Discussions on a new GI registration system and expansion of the product coverage of the higher level GI protection under TRIPS have proved particularly difficult in the context of the WTO Doha Round and current negotiations on this issue are in a stalemate.

At WIPO, Australia, New Zealand and Canada echoed the US statement and called on the members of the Lisbon Union to take into account the opinion of WIPO members that are not parties to the Lisbon Agreement.

Indeed, it is still unclear whether observers already participating to the revision process will play a relevant role at the diplomatic conference.

“The goal of the revision is to increase the membership of the agreement, hence, non-members should have a say in the process,” a source said. “That is what is happening, but non-members might have the right to vote at the diplomatic conference in the way they had the right to vote in the context of the Hague Agreement 14 years ago.”

Additional concerns arise from the compatibility of the future instrument with those countries that protect geographical indications in their domestic trademark laws.

In this regard, the source close to the negotiations said that one of the main reasons behind the revision process is “to build in flexibilities to allow different systems to participate in Lisbon.”

“Not all countries protect geographical indications in the same way. Some use collective or certification marks. Should the revised text be approved, these marks also could be registered as geographical indications in the new system,” the source said.