Preparations Begin For Lisbon Revision At WIPO; Procedural Question Raised

The 28-member Lisbon Agreement for the Protection of Appellations of Origin and their International Registration is en route to being revised to include geographical indications and allow international organisations to join the agreement. But some other member countries of the World Intellectual Property Organization, which oversees the agreement, are raising procedural questions and intend on having a say in the revision.

The preparatory committee for a diplomatic conference (high-level final treaty negotiation) is scheduled to take place on 30-31 October to decide on the diplomatic rules of procedure. The diplomatic conference is expected to take place in May 2015.

The proposed revision would allow geographical indications (GIs) from a Lisbon member to be protected in all of the Lisbon member countries. Just as with appellations of origin, when a country would seek protection for a new GI, member countries of the Lisbon system would have a certain amount of time to refuse such protection in their territory.

The revision comes after a working group was set up in 2008 to study ways to increase the Lisbon Agreement membership. The working group drafted a revision of the agreement, in particular to include GIs. An international register of geographical indications would also be set up, such as the current one on appellations of origin.

In 2013, the Lisbon Union decided to convene a diplomatic conference in 2015. The WIPO director general proposed in a document dated 25 August that the diplomatic conference be held from 11-21 May 2015. The government of Portugal has officially offered to hold the diplomatic conference, which must be confirmed by the preparatory committee.

Meanwhile, according to a source, nine countries have tabled a proposal to the preparatory committee asking that the draft rules of procedure be amended so that all WIPO members can participate in the diplomatic conference in the same capacity.

[Update:] The proposal was posted today to the WIPO website, available here [pdf]. The proposal includes a list of examples of rules of procedure for past diplomatic conferences, including the Hague, Singapore, Beijing and Marrakesh treaties.

The countries putting forward the proposal are: Australia, Chile, Israel, New Zealand, Panama, South Korea, Singapore, United States and Uruguay. Israel is a Lisbon member. The Lisbon membership list is here.

At the preparatory committee meeting, “for which non-Lisbon members have been invited as observers, the draft rules of procedure will be discussed together with the proposed amendment and Lisbon members will decide on the text of the draft rules of procedure that will be submitted to the diplomatic conference,” said the WIPO source.

Opponents of the current wording of the revision, in particular the United States, contend that including geographical indications in the Lisbon Agreement is not merely a revision of the agreement, but would create a new treaty. They have been asking that all WIPO members be allowed to participate in the diplomatic conference, on equal footing with the Lisbon Agreement members. WIPO has 187 members [corrected].

Lisbon members consider that they should be able to revise an agreement that applies only to its own members.

The United States tabled a proposal in that sense to the WIPO Coordination Committee during the WIPO Assemblies in September, but no conclusion was reached by the committee (IPW, WIPO, 29 September 2014).

It is unclear how the distinction is made between a treaty or a revision. For instance, the 2006 Singapore Trademark Law Treaty made small updates to the existing treaty, but was considered a treaty. It also might be unclear whether a diplomatic conference is a formal treaty negotiation or can be used for revisions or other types of instruments, a discussion that came up in the past at WIPO in relation to proposed instruments for the protection of genetic resources, traditional knowledge and folklore.

Draft Rules of Procedure, Attendance

The current Rule 2 (Composition of the Conference) of the draft rules of procedure [pdf] of the diplomatic conference states that the conference will be attended as follows:

(i) delegations of the States members of the Lisbon Union (hereinafter referred to as
“the Member Delegations”),

(ii) the delegations of the African Intellectual Property Organization and the European
Union (hereinafter referred to as “the Special Delegations”),

(iii) the delegations of States members of the World Intellectual Property Organization
which are not members of the Lisbon Union and the delegations of States members of the
United Nations which are not members of the World Intellectual Property Organization
(hereinafter referred to as “the Observer Delegations”), and

(iv) representatives of intergovernmental and non-governmental organizations and
others invited to the Conference as observers (hereinafter referred to as “the Observers”).

Countries in opposition are considering a change of some paragraphs of these rules, to broaden participation to all WIPO delegations, a source said.

Opponents of the current draft rules of procedure also note that the rules present the European Union and the Organisation Africaine de la Propriété Intellectuelle (OAPI) as “special delegations,” and apply the provisions for Lisbon members to them, except for voting. The EU and OAPI are not WIPO members. The change proposed by the US and others would make it possible for both international organisations to join Lisbon outright.

According to the list of invitees [pdf] to the diplomatic conference, members of the Lisbon Union would be considered as “member delegations,” with a right to vote. OAPI and the EU would be invited as “special delegations” with the same status as member delegations but could not vote, and other WIPO members and United Nations members which are not members of WIPO would be invited as “observer delegations,” without the right to vote.

Image Credits: Flickr – Leo Reynolds