Diplomatic Conference On Inclusion Of GIs In WIPO Treaty Kicks Off Next Week

Geographical indications might gain stronger international protection through the amendment of a 28-member World Intellectual Property Organization-administered treaty protecting appellations of origin. The high-level negotiating meeting taking place next week will consider pending issues in hopes of completing the landmark change. Here is your guide to the issues.

The Diplomatic Conference for the Adoption of a new Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration is expected to take place from 11-21 May. The draft agenda for the diplomatic conference is here [pdf].

The diplomatic conference is expected to adopt a new Act of the Lisbon Agreement, as an amendment or a revision of the current agreement, a source explained.

Geographical indications (GIs) are products which have particular qualities or reputation linked to their geographical origin. GIs include food products, such as Scotch beef, or parmigiano reggiano from Italy, or non-food products such as Montecristi hats from Ecuador, or Longquan porcelain from China.

The Lisbon system includes an international register of appellations of origins (AOs), which are GIs with more stringent production requirements. The amendment to the Lisbon Agreement seeks to include GIs in the Lisbon system and in the register, and to allow intergovernmental organisations such as the European Union (EU) or the African Intellectual Property Organization (OAPI) to become members of the agreement.

WIPO issued a press release on the diplomatic conference, which is available here.

Negotiating Texts

Lisbon members are expected to work from the Basic Proposal [pdf] for the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, and the Basic Proposal [pdf] for the Regulations under the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The WIPO secretariat has also prepared Notes on the Basic Proposal [pdf] for the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, as well as Notes on the Basic Proposal [pdf] for the Regulations Under the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

Also expected to be considered by Lisbon delegates is a Compilation of Proposals [pdf] by WIPO Member States for Amendments to the Basic Proposal for the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (IPW, WIPO, 24 February 2015). Countries which submitted suggestions were: Algeria, Chile, Colombia, Israel, Russia, South Korea, Thailand, Togo, Tunisia and the United States. Of those, Algeria, Togo, Israel and Tunisia are Lisbon members.

Remaining Issues

During the last meeting of the working group, from 27-31 October, Working Group Chair Mihály Ficsor of Hungary, in his summary of the session [pdf], drew a list of pending issues left to be resolved at the diplomatic conference. Below is a description of main remaining issues as listed by the chair.

The European Union put forward a similar list with some differences in an interview with Intellectual Property Watch this week (IPW, WIPO, 5 May 2015).

A number of articles of the draft amended Lisbon Agreement show brackets and options, reflecting discussions in progress.

In particular, the issue of the financing of the agreement – whether maintenance fees should be introduced or Lisbon members should be assessed higher contributions – is expected to be tackled. Also under discussion is the way to address the issues of prior trademark rights, and a GI or AO acquiring generic character.

Delegates will also have to address how to conduct negotiations following a refusal; the potential necessity of a phasing out period in the case of prior use of the GI or AO by a third party; and grounds for invalidation of the effects of an international registration in its territory.

Trans-Border Geographical Area

Article 5.4 (Application – Possible Joint Application in the Case of a Trans-border Geographical Area), still in brackets, provides that “In case of a geographical area of origin consisting of a trans-border geographical area, the adjacent Contracting Parties may agree to act as a single Contracting Party of Origin by filing an application jointly, through a commonly designated Competent Authority.”

According to the report of the last session [pdf] of the working group, Hungary supported the deletion of those brackets as it said it would be useful for countries to submit joint applications for AOs or GIs originating in a trans-border geographical area. This was supported by the Czech Republic, the EU, Moldova, Portugal, and Slovakia. Algeria asked that brackets remain, but did not appear to specify why.

Maintenance, Individual Fees

Members have been discussing the financial sustainability of the Lisbon system. Ficsor said the current deficit of the Lisbon system has been generated by costs related to the work of the working group to review the system, not by the management of the International Register by WIPO.

The issue of maintenance fees is addressed in several articles, notably Article 7.3 (Fees – maintenance fee), Article 8.3 (Period of Validity of International Registrations – Effect of Non-Payment of a Maintenance Fee), and Article 24.3.vi (Finances – Sources of Financing of the Budget).

A number of Lisbon members consider that the introduction of maintenance fees would be contrary to the principles of the Lisbon Agreement. According to the report, France opposed the introduction of such fees as contrary to the principles, “as also embedded in the current Lisbon Agreement, which provided for protection that was unlimited in time.” Italy, Czech Republic, Hungary, Portugal, Georgia, and Moldova concurred, as did the EU and Switzerland, both GI proponents who are non-Lisbon members.

Mexico, a Lisbon member, however, said it is in favour of the introduction of maintenance fees under Article 7.3 and individual fees under Article 7.5 to help with the Lisbon System self-sufficiency.

Non-members such as South Korea, the United States and Chile were in favour of maintenance fees.

Goods of the Same Kind

Article 11.1 (a) ((Protection in Respect of Registered Appellations of Origin and Geographical Indications – Content of Protection – any use of the appellation of origin or the geographical indication) has two alternatives.

The paragraph deals with the use by third parties of products of the same kind as AOs and GIs but which do not originate in the geographical area of origin of the AOs and GIs. That also applies to products which are “not complying with any other applicable requirements for using” the AO or GI denomination.

Alternative A stipulates that such good would amount to the “misuse, imitation or evocation” of the AO or GI and which would be detrimental to, or exploit unduly its reputation.

Alternative B describes goods “that are not of the same kind as those to which” the AO or GI applies, “if such use would indicate or suggest a connection between those goods and the beneficiaries, and is likely to damage the interest of the beneficiaries.”

Italy voiced its preference for Option A, followed by Hungary, Georgia, Portugal, France, and Iran.

Moldova supported Option B, arguing that it was both clear and perfectly in line with the World Trade Organization Agreement on Trade-Related Intellectual Property Rights (TRIPS

The US expressed concern “about the presumption of confusion or the presumption of misleading use… in the absence of any requirement of use.”

Prior Trademarks

Article 13 (Safeguards in Respect of Other Rights – Prior Trademark Rights) contains two alternatives.

Alternative A stipulates that the protection of an AO or a GI in a contracting party “shall not prejudice the eligibility for, or the validity of, the registration of the trademark, or the right to use the trademark, taking into account the legitimate interests of the owner of the trademark as well as those of the beneficiaries of the rights … and provided that the public is not misled.”

Alternative B states that the protection of the AO or GI in the contracting party “shall be subject to the rights conferred by the prior trademark under national or regional law along with any applicable exceptions to those rights.”

France, Hungary, Czech Republic, Iran, Portugal, and the EU supported alternative A, while the US and Australia, both non-Lisbon members, were in favour of alternative B.

Suggestions made by non-Lisbon countries were included in the draft text at the sessions of the Lisbon Working Group, according to a source.

Prior Use – Phasing Out Period

Also expected to be resolved at the diplomatic conference is the issue of prior use of a product name by a third party in a contracting party. The Lisbon Agreement and its proposed amendment foresee that contracting parties can refuse to protect specific AOs or GIs for a prior use reason for example.

Prior use applies when a contracting party has not refused to protect a specific AO or GI that would conflict with prior use of a name for a product of the same kind.

Article 17.1 (Prior Use – Phasing Out of Prior Use) addresses the case where a denomination had been used in a contracting party by a third party, and when this contracting party decided to protect the AO or GI in its territory. A phasing out period may be given to the third party to terminate such use.

The Czech Republic, Georgia, Hungary, Italy, and Portugal underlined the importance of the phasing out of prior use, as did non-members the EU and Switzerland. Article 17.1 is entirely bracketed.

Grounds for Invalidation

Article 19.1 (Invalidation – Grounds for Invalidation) bears two alternatives. The article addresses the grounds on the basis of which a contracting party may pronounce invalidation of the international registration in its territory.

Alternative A states that those grounds shall include prior right. Alternative B also lists prior use, and “when compliance with the definition” of an AO or GI in the contracting party of origin “is not ensured anymore.”

According to the list drafted by the chair, a question in this article is to decide whether an exhaustive list of grounds for invalidation should be established or not.

Protection against Becoming Generic

Also heavily bracketed is Article 12 (Protection Against Becoming Generic). It currently reads as: Subject to the provisions of this Act, registered appellations of origin and registered geographical indications cannot [be considered to have] become generic as long as [the denomination constituting] the appellation of origin, or [the indication constituting] the geographical indication, is protected in the Contracting Party of Origin [and national or regional law requirements in the Contracting Party concerned regarding use, maintenance and renewal are met].

The article also includes a footnote: Article 12 is without prejudice to the application of the provisions of this Act concerning prior use, as, prior to international registration, the denomination or indication constituting the appellation of origin or geographical indication may already, in whole or in part, be generic in a Contracting Party other than the Contracting Party of Origin, for example, because the denomination or indication, or part of it, is identical with a term customary in common language as the common name of a good or service in such Contracting Party, or is identical with the customary name of a grape variety in such Contracting Party.”

The explanatory note by the WIPO secretariat says that the footnote “is meant to make it absolutely clear that the provision only deals with generic use initiated after protection of the registered appellation of origin or geographical indication became effective in a given Contracting Party. The term “generic” is defined in the footnote, taking into account the provisions of Article 24.6 of the TRIPS Agreement [World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights].”

Background

Since 2009, the Working Group on the Development of the Lisbon System has been working on the possible amendment of the Lisbon system as a way to increase its membership, currently at 28 members.

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.

The working group was open to the whole membership of WIPO and non-Lisbon members could suggest textual changes to the draft amendment, but without drafting power.

According to the draft rules of procedure [pdf], approved by the Preparatory Committee of the Diplomatic Conference (IPW, WIPO, 31 October 2014), the conference will be open to non-Lisbon members as observer delegations, with the exception of the EU and ARIPO, which were designated by Lisbon members as “Special Delegations.” These delegations can vote but under a number of strict conditions of representation of their Lisbon member states.

Some large non-member countries, such as the United States, Japan, South Korea, Canada and Australia, are fighting to fully open the negotiations (IPW, WIPO, 7 May 2015; IPW, WIPO, 5 May 2015).