When Cornish Pasty (GI) Meets Feta Cheese (AO) At WIPO For Equal Protection

An amendment to elevate the status of geographical indications at the World Intellectual Property Organization appears to be on track for a high-level final negotiation in 2015 after a meeting last week.

A number of pending issues remain as the draft amendment heads to the annual assembly in September. In addition, a new fee schedule is up for approval in September to increase financial sustainability of the agreement.

The eighth session of the Working Group on the Development of the Lisbon System (Appellations of Origin) met from 23-27 June. The working group was formed to consider amendments to the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, so that the agreement attracts more members. There are currently 28 members of Lisbon.

Geographical indications (GIs) are collective rights conferred to goods that have a specific geographical origin from which they derive quality, reputation and characteristics. Appellations of origin (AOs) are a GI with higher standards.Well-known AOs can be tequila (Mexico), feta cheese (Greece), or parma ham (Italy).

The decision to convene a diplomatic conference in 2015 to agree on the Lisbon System amendments was taken last year, with two more sessions of the working group, one of which was this week.

According to working group Chair Mihály Ficsor of Hungary, last week member states worked on a draft revised Lisbon Agreement [pdf] on AOs and GIs. Attending the working group were members of the Lisbon System and observer countries. Observers included countries interested in joining the revised instrument who are not currently of Lisobon, and other countries, such as the United States and Australia, which protect GIs through a trademark system.

Ficsor on the last day issued a draft summary by the chair [pdf], which was approved by member states after some textual changes.

A list of pending issues for consideration by the next meeting of the working group includes: Article 2 (Subject-Matter) (2) dealing with AOs or GIs found in possible trans-border geographical areas; Article 7 (Fees) (2)(b), Article 8 (Period of validity of International Registration), and Article 24 (Finances) (3) (v) concerning the possible introduction of maintenance fees for registered AOs and GIs; and Article 11 (Protection in Respect of Registered Appellations of Origin and Geographical Indications), a new version of which is annexed to the summary by the chair.

Among other issues still pending are Article 12 (Protection Against [Acquiring a Generic Character] [Becoming Generic]), and Article 13 (Safeguards in Respect of Other Rights) concerning prior trademark rights.

Proponents of a trademark system, such as the US and Australia, have said that some names have become generic in their countries and cannot be protected as GIs or AOs. There also have been efforts to revive work on GIs at the Standing Committee on the Law of Trademarks, Industrial Designs and Trademarks (SCT) (IPW, WIPO, 21 March 2014).

WIPO Proposal to Increase Fees

On a related issue, the WIPO secretariat last week issued a proposal [pdf] to update the fee schedule of the Lisbon Agreement. According to a WIPO source, the fees under the Lisbon System have not been raised over the last 20 years. A major concern of opponents of the amendment process and attracting more members to the system is that the system is not financially sustainable on its own. It therefore requires the broader membership of WIPO to support it.

The WIPO proposal, which is expected to be submitted to the Lisbon Union Assembly in September, according to a WIPO source, indicates that the projected income for the Lisbon Union in the WIPO 2014/2015 budget is CHF694,000 (about US$778,000) and the projected expenditure is CHF1,606,000 (about US$ 1,800,000). The deficit, explains the proposal, has occurred since 2009, when the working group was established, generating extra costs.

The WIPO Program and Budget 2014/2015 reflects that “fee income is by far not sufficient to cover the expenses of the International Bureau for maintaining the international registration service of the Lisbon system,” according to the document, as some 98 percent of the income of the Lisbon Union comes from other sources than fees.

The document also stresses that “as appellation of origin and other geographical indications are based on geographical names…. there is a limit to the total number that may ever exist.”

The current fee schedule asks CHF500 (about US$ 561) for an international registration. The proposed change would raise this price to CHF1,000 (about US$ 1,120).

The summary by the chair notes that the overall sentiment about this proposal as “predominantly positive.”

Future Work

What is expected to be the tenth and last session of the working group is scheduled to take place from 27-29 October. This tenth session, according to the summary by the chair is supposed to focus on technically preparing the texts of the draft revision of the Lisbon Agreement for the diplomatic conference, and to try and reduce pending issues. The tenth session will also hold a preparatory committee, which will decide the venue and dates of the diplomatic conference.

The US and Chile, both non-members of the Lisbon System, remarked that the World Trade Organization has scheduled to hold the next meeting of the WTO Council for Trade-Related Aspects of Intellectual Property Rights on the same dates as the proposed tenth session of the working group, creating a conflict.