Q&A With The EU On The Benefits Of Amending The Lisbon Agreement

Next week, the 28 members of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration administered by the World Intellectual Property Organization are expected to conduct a high-level negotiating meeting to agree on a new Act of the agreement. Major changes expected are the inclusion of geographical indications in the agreement, and the possibility for intergovernmental organisations such as the European Union to become members of the revised agreement.

The EU has been a proponent of the amendment and participated in the Working Group on the Development of the Lisbon System in charge of drafting the amendment to be finalised next week.

In a Q&A, the EU in written answers attributed to Peter Sørensen, head of the EU delegation to the United Nations, explained why it is important for the EU that the Lisbon System be amended. The questions were sent by Intellectual Property Watch’s Catherine Saez.

Intellectual Property Watch (IPW): What is the Lisbon System and why is it important, and what is the aim of the amendment to be negotiated?

European Union (EU): The Lisbon Agreement of 1958 established an international system creating the possibility of protection of appellations of origin (a subgroup of geographical indications) in contracting parties other than the country of origin through a single registration at WIPO. Appellations of origin within the meaning of the Lisbon Agreement can serve to designate any products and are not limited to agricultural products.

The Lisbon system includes seven EU Member States. International organisations cannot be contracting parties; however, they may participate as observers. Each member is free to choose the form of protection, e.g., through sui generis legislation, certification or collective trademarks. The international registration of an appellation of origin assures it of protection, without any need for renewal, for as long as the appellation is protected in the country of origin. However, the member countries that have received notice of the registration of an appellation of origin have the right to refuse to protect it in their territory.

Since 2009, the 28 members of the Lisbon Agreement have been negotiating a revision of the system with a view to adapting it to the evolving international legal framework for intellectual property rights – in particular the WTO Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) which comprises all geographical indications – and improving it so that it might attract a wider membership, while preserving the principles and objectives of the Lisbon Agreement.

The revision of the Lisbon Agreement is expected to involve: (i) the refinement of its current legal framework, ensuring compatibility with the TRIPS Agreement; (ii) the inclusion of provisions specifying that the Lisbon System also applies in respect of geographical indications other than appellations of origin; and (iii) the inclusion of the possibility of accession by international organisations, such as the EU.

IPW: Why it is significant that international organisations such as the EU be allowed to become a member of the Lisbon system?

EU: International organisations such as the EU, but also other international organisations like ARIPO (African Regional Industrial Property Organization) and OAPI (Organisation africaine de la propriété intellectuelle), play an important role in the protection of geographical indications.

IPW: Seven EU countries are already members of the Lisbon Agreement. If the EU becomes a member of the Lisbon system, would that mean that all EU members become members or would it be left to national choice?

EU: Seven EU Member States (Bulgaria, Czech Republic, France, Hungary, Italy, Portugal and Slovakia) are currently members of the Lisbon Agreement. One objective of the current review of the Lisbon system is to allow for the possibility of full membership of international organisations such as the EU. The EU has already clearly expressed a positive view regarding the establishment of this possibility.

IPW: Could you describe the main changes to the original Lisbon Agreement which appear in the proposed revision and how that makes it more attractive to new members?

EU: The revised agreement is expected to involve: (i) the refinement of its current legal framework, ensuring compatibility with the WTO TRIPS Agreement; (ii) the inclusion of provisions specifying that the Lisbon system also applies in respect of geographical indications other than appellations of origin; and (iii) the inclusion of the possibility of accession by international organisations. A modernised agreement should bring significant new benefits for producers and consumers, its current members as well as for a broad range of prospective new members, in particular developing and least developed countries.

IPW: What would you say are the remaining issues to be sorted out at the diplomatic conference?

EU: Some major issues are the exact specification and clarification of the rules of the Lisbon system as regards application for, and validity of international registrations; protection and refusal of the effects of international registrations; joint applications in the case of a trans-border geographical area; ensuring a high level of protection; ensuring appropriate safeguards in respect of other rights such as prior trademarks; dealing with prior use of geographical indications or appellations of origin; and clearly defining the grounds for invalidation.

IPW: What is the economic importance of GIs to the EU and the potential savings of an international registration of GIs?

EU: The economic weight of GIs in the EU is considerable: The estimated sales value of EU GIs amounted to € 54.3 billion in 2010, which represents some 5.7% of the total EU food and drink sector. Trade in products carrying a protected GI is of significant economic relevance to the EU: The estimated exports value of EU GIs amounted to € 11.5 billion in 2010, which is about 15% of EU food and drink industry exports. The high number of foreign GIs that benefit from GI protection in the EU (around 1,300) is a further testimony of the value of GIs. Most, but not all, of these foreign GI’s are protected through bilateral agreements.

As to the potential economic savings of an international registration of GIs, it seems too early to make clear quantitative predictions. However, it can be expected that the savings in terms of reduced administrative costs will be significant.

IPW: Are non-food GIs protectable in the EU? Would the fact that the EU becomes a member of the new Lisbon Agreement make non-food GIs protectable in the EU?

EU: With the exception of a limited number of non-agricultural products closely linked to the rural economy, there is currently no harmonized legislation on the protection of non-food GIs at EU level. Non-agricultural GIs are protected in each Member State according to its own legal system and provisions, following the relevant TRIPS rules. These laws take various forms, ranging from regional or national regulations on either specific crafts (e.g., ceramics) or all non-agricultural products to product-specific laws (e.g., Solingen knives). Internal reflection is still ongoing on possible next steps for the EU. However, should the EU become a full member of the new Lisbon Agreement, this would not per se entail legislation at EU level for non-food GIs.

IPW: GIs have been promoted as a development tool for developing countries, what is the EU view on that?

EU: The revised Lisbon Agreement will offer new members a modern multilateral instrument which will enable them to take advantage of the significant benefits stemming from the unique features of the producers’ territory (such as traditional knowledge or biodiversity) and assist them in transforming these features into marketable products. Appellations of origin and geographical indications can turn producers of labour-intensive commodities into exporters of high-quality agro-business and handicraft products. This has the potential to provide a significant incentive for growth and employment.

The establishment of an international registration and protection system for appellations of origin and geographical indications will have positive effects for – particularly small and medium sized and rural – producers worldwide in obtaining protection for their designations abroad at affordable costs. Moreover, it can be a boost for private and public investment, with positive effects for the economy, sustainable development, increased competitiveness, export diversification and job creation.

Geographical indications are powerful instruments for retaining added value in local communities. By increasing jobs and growth they contribute to avoiding rural exodus.

IPW: A number of WIPO member states have reacted to the fact that the EU, although not a member of the Lisbon Agreement, will have negotiating powers at the diplomatic conference, which is denied to all other non-members. What would you say about their concern?

EU: According to the draft Rules of Procedure that the Preparatory Committee recommended to the Diplomatic Conference for adoption in October 2014, the African Intellectual Property Organization and the EU would have the status of “Special Delegation”. While the EU clearly welcomes this, we were not demandeur for this status. The status was proposed by the WIPO Secretariat on the basis of competence and precedent.

IPW: The financial sustainability of the Lisbon system has been called into question by some member states which are not members of the system, and they have called for a change in the fee structure of the Lisbon Agreement. What do you think about that proposal?

EU: As the EU is currently not a party to the Lisbon Agreement, the EU cannot pronounce itself on this issue in detail. In any event, due consideration will have to be given to the long term financial sustainability of the Lisbon system.

[Note: the members of the Lisbon Union are: Algeria, Bosnia and Herzegovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Cuba, Czech Republic, France, Gabon, Georgia, Hungary, Iran, Israel, Italy, Macedonia, Mexico, Moldova, Montenegro, Nicaragua, North Korea, Peru, Portugal, Serbia, Slovakia, Togo, and Tunisia.]