Geographical Indications At WIPO: Members Dissent On Participation In Treaty Talks

Members of a World Intellectual Property Organization treaty protecting appellations of origins who are seeking to revise that treaty to include geographical indications were opposed this week by several WIPO member states seeking to have a say in the adoption of the revision. The issue has raised a question for WIPO about participation in treaties and agreements.

After tough discussions this week, a preparatory committee for a diplomatic conference (high level negotiation) agreed to transmit the draft rules of procedure to the diplomatic conference [clarified]. It was agreed by all but one member of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration to transmit the rules of procedures to the diplomatic conference for adoption.

Portugal, which had offered to host the diplomatic conference said that due to national circumstances, had to retract the offer. It was agreed that the diplomatic conference would take place in the WIPO conference hall from 11-21 May.

Members are expected to return later today to give final approval to the decision. [Update: Lisbon members reconvened to approve chair’s summary on changes to draft text of revision. The preparatory committee has concluded with a decision to proceed to the diplomatic conference without consensus and over the strong protest of several other WIPO members.]

One of the treaty members – along with a number of non-members – insist that the diplomatic conference to agree the revision be open to all WIPO members on an equal basis, arguing that the change to the treaty is not a mere revision but would create new rights and obligations impacting non-members of the treaty.

Geographical indications (GIs) are signs used on goods to indicate they have a specific geographical origin and qualities, reputation or characteristics linked to that place of origin. Appellations of Origin (AOs) are GIs with higher requirements.

The Preparatory Committee of the Diplomatic Conference for the Adoption of a Revised Lisbon Agreement on Appellations of Origin and Geographical Indications is taking place on 30-31 October. The preparatory committee is included in the 10th meeting of the Working Group on the Development of the Lisbon System, being held from 27-31 October. The start of the week was devoted to minor changes to the draft revision text.

The revised treaty would apply to the current 28 Lisbon members when they ratify the revision, and any new members including intergovernmental organisations that would be eligible after the revision is adopted [clarified].

However, some countries, such as the United States and Australia, which use trademarks to protect geographical indications worry that the inclusion of GIs in the Lisbon Agreement and the expansion of the treaty to new members could impact their exports to current or future Lisbon members, according to sources.

The preparatory committee drew a full room on the morning of 30 October, well beyond the 28 member parties.

According to its agenda [pdf], the preparatory committee was tasked with the consideration of draft rules of procedures [pdf] for the diplomatic conference, consideration of the list of states [pdf] and observers to be invited, along with the agenda of the diplomatic conference, and its date and venue [pdf].

Mihály Ficsor of Hungary, the chair of the Lisbon Working Group, was also elected chair of the preparatory committee.

He said that on 29 October, the working group agreed that the draft revised Lisbon Agreement on Appellations of Origin and Geographical Indications, and the draft regulations Under the Draft Revised Lisbon Agreement, as amended after the three days (27-29 October) spent working on pending issues, should constitute the basic proposal for the diplomatic conference.

The draft rules of procedure indicate that only current Lisbon Agreement members would be able to vote in the diplomatic conference.

Non-Lisbon Members Seek Inclusion in GI Talks

Earlier this month, nine countries, including one member of the Lisbon Agreement (Israel), put forward a proposal to amend those rules of procedures as well as the list of invited member states to allow full participation of the whole WIPO membership on an equal basis at the diplomatic conference (IPW, WIPO, 15 October 2014).

A large number of observer states were present, in particular a number of countries requesting that the diplomatic conference include the whole WIPO membership.

Israel provided a statement on behalf of the nine countries, which are: Australia, Chile, Israel, New Zealand, Panama, Singapore, South Korea, United States and Uruguay. Canada and Japan co-sponsored the proposal.

The Israel delegate said the revision of the Lisbon Agreement, as prepared by the working group, cannot be said to be a mere technical revision. Including geographical indications in the system will lead to a profound change, she said, adding that GIs are interesting for all WIPO member states, not just the Lisbon Agreement members. The delegate raised concern about the setting of a precedent.

This view was supported by Australia, which said not allowing full participation would set a precedent in the last 25 years of WIPO history. This was supported by several other countries. The US ambassador said the diplomatic conference represents an “historic opportunity” to develop a broad international instrument.

“True success will remain elusive,” she said, if the diplomatic conference is limited to Lisbon members. “We all need to have seats.”

All WIPO member states have interest in international norms in this area, she added, which could have trade implications. “We all have an interest in GIs … so we should all have a say,” she concluded.

The US uses the trademark system to protect GIs. According to the United States Patent and Trademark Office, “The United States does not protect geographic terms or signs that are generic for goods/services. A geographic term or sign is considered ‘generic’ when it is so widely used that consumers view it as designating a category of all of the goods/services of the same type, rather than as a geographic origin.”

Other countries supporting full participation were Russia and India, which said the country attaches great importance to GIs and believes they have a vital role in the growth and viability of the handicraft sector. Also Brazil, which said inclusiveness in the diplomatic conference answers to Recommendation 15 (Norm Setting Activities) of the WIPO Development Agenda, Argentina and Uruguay concurred. Brazil also said that all member states should participate on an equal footing, in line with the practice established in WIPO, and no different precedent should be set by the Lisbon Union.

Panama, Singapore, and Saudi Arabia also supported the proposed amendment of the draft rules of procedure. Saudi Arabia said the revised agreement is likely to bring about important obligations for countries and have important effects on countries that are not members of the Lisbon Agreement. It will affect products of Saudi Arabia reaching the international market, the delegate said.

Lisbon Members Defend Prerogative

Several Lisbon members remarked that allowing the full participation of the WIPO membership in the diplomatic conference would also constitute a precedent and cited Article 13 (Regulations, Revision) of the Lisbon Agreement. Article 13 states: “This Agreement may be revised by conferences held between the delegates of the countries of the Special Union.”

Countries requesting full participation remarked that Article 13 did not prevent members of the Lisbon Agreement from choosing full participation.

Lisbon members also invoked Article 39 and Article 40 of the Vienna Convention on the Laws of Treaties [pdf]. Article 39 (General rule regarding the amendment of treaties) says, “A treaty may be amended by agreement between the parties….”

Article 40 (Amendment to international treaties) paragraph 2 states: “Any proposal to amend a multilateral treaty as between all the parties must be notified to all the contracting States, each one of which shall have the right to take part in: a) the decision as to the action to be taken in regard to such proposal; (b) the negotiation and conclusion of any agreement for the amendment of the treaty.”

Voicing support for the draft rules of procedure as presented to the preparatory committee were Portugal, Iran, France, Italy, Czech Republic, Hungary, Peru, and Mexico, all of which are Lisbon members.

Germany and Switzerland, which are not Lisbon members, have also supported the draft rules of procedure.

The 28 Lisbon Agreement members are: Algeria, Bosnia Herzegovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Cuba, Czech Republic, North Korea, France, Gabon, Georgia, Haiti, Hungary, Iran, Israel, Italy, Mexico, Montenegro, Nicaragua, Peru, Portugal, Moldova, Serbia, Slovakia, Macedonia, Togo, and Tunisia.

Israel’s Opposition to Rules of Procedure

Before the preparatory committee reconvened for the afternoon session yesterday, Fiscor said he conducted informal consultations to try to reach a compromise solution to no avail.

This morning, Fiscor presented a decision for adoption by the Lisbon members. Some 19 countries took the floor to support the proposal (Mexico, Italy, France, Hungary, Czech Republic, Iran, Portugal, Moldova, Serbia, Peru, Slovakia, Costa Rica, Tunisia, Bulgaria, North Korea, Congo, Bosnia, Togo, and Georgia), while Israel contested the process for the decision to the bitter end.

It was finally agreed by the preparatory committee (except Israel) to transmit the draft rules of procedure to the diplomatic conference and recommend them for adoption at the diplomatic conference.

Other WIPO members have the possibility to submit proposals in writing until 1 February for amendments to the basic proposal on issues that were identified by the working group as pending issues. The WIPO secretariat is then expected to compile those proposals and submit them to the diplomatic conference.

Image Credits: Franco American Alliance Treaty of Amity and Commerce of 1778