Q&A With US On Concerns About Lisbon GI Treaty Negotiation 08/05/2015 by Intellectual Property Watch 1 Comment Share this Story:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Google+ (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) The views expressed in this article are solely those of the authors and are not associated with Intellectual Property Watch. IP-Watch expressly disclaims and refuses any responsibility or liability for the content, style or form of any posts made to this forum, which remain solely the responsibility of their authors. 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 United States has been among the leading countries concerned about the negotiation. In a Q&A, the US in written answers explained the concerns. The questions were sent by Intellectual Property Watch’s Catherine Saez. Intellectual Property Watch (IPW): The 28-member Lisbon Agreement is expected to be amended by a diplomatic conference next week. Countries that are not members of the agreement will be considered as observers. The United States has been asking that the full membership of WIPO participate in the Diplomatic Conference. Can you explain why? United States (US): We are concerned that a dangerous precedent is about to be set. For the past 25 years, WIPO diplomatic conferences have been open to all interested WIPO members. This is important because they generally address issues of significant economic consequence for the United States and many other countries. This is certainly true of the proposed revision of the Lisbon Agreement, which will expand it to cover all geographical indications of origin (GIs). If the new treaty is not inclusively negotiated to reflect the divergent approaches to GIs in different WIPO member states, then many of the world’s producers will be excluded from being able to use the system to protect their GIs, and many producers and consumers will be harmed by improper registration of generic names for goods as GIs. In our view, in 2015 WIPO should have an inclusive process to create a system for the international registration and protection of GIs where all members participate on equal footing. IPW: The revision of the Lisbon Agreement is meant to attract new members. In your opinion, will the new act of the agreement be more attractive to members such as the United States who use trademark as a means of protection, and if not, why not? US: We think that it is unlikely that the New Act of the Lisbon Agreement will be more attractive to members that use trademark systems as the means to protect GIs. Even though the current Lisbon Agreement went into force in 1966, only 28 of the 188 WIPO members have joined, because it is inconsistent not only with trademark systems, but with many other approaches to protection of geographical indications. Despite this, the Lisbon Members have stated that they will not significantly change the Lisbon System. If the New Act does not allow for fair, equitable and transparent procedures for decisions on the acquisition, maintenance and enforcement of GIs, then it will remain unattractive to other countries. IPW: What are the main concerns with the current draft amendment to the Lisbon Agreement? US: Our primary concerns relate to issues of territoriality of rights, financial sustainability of the system, and due process. We believe that members should be able to make their own determinations as to whether a GI should be protected or invalidated in their territory; that the system should be self-sufficient rather than continuing to depend on the revenue generated by other WIPO registration systems; and that there must be safeguards for preexisting rights and the ability to use generic terms for a product. For more detail, note our submission that is posted at: http://www.wipo.int/meetings/diplomatic_conferences/2015/en/amendments.html IPW: If the current draft is adopted as it is, what do you consider would be the consequences on non members of the agreement? US: The current draft contains a series of alternatives, including some of significant impact, that need to be agreed upon at the diplomatic conference. Depending on which ones are adopted, one possible consequence would be the registration of common food names as GIs in a New Act member, requiring producers of that type of food in that member as well as in non-members that export to it to find a new name for their product. This would cause considerable confusion among consumers and would be likely to raise costs as well. IPW: Would the US wish to join the Lisbon Agreement if it included specific provisions on trademarks, and which ones? US: It would not be sufficient simply to include provisions on trademarks. The fundamental concern is whether the agreement provides for fair and equitable acquisition of intellectual property rights, as well as their maintenance and enforcement. For example, the current Lisbon Agreement does not allow contracting parties to collect an application fee to cover the costs of examination, publication, third party opposition, and registration. This leads to unfair situations where one Lisbon Member has hundreds of terms protected in perpetuity for free in other Lisbon Members. It is also critical that the scope of any protection is subject to appropriate limitations. The United States, and many others, would only be able to join the new Agreement if it facilitates the protection of GIs in a fair manner that does not harm trademark owners or the users of generic terms. IPW: What are the comparative advantages of trademark protection over GI protection in your view? US: Trademark protection is based on the fundamental tenet of first-in-time, first-in-right, which provides certainty for one who invests in a business using the mark. In some countries, GI protection ignores that tenet in favor of a later-in-time GI. The United States agrees that GIs can be valuable and that their legal protection is important. We protect GIs primarily as regional certification and collective trademarks. Just like other GI systems, products bearing regional trademarks must come from the geographic area named. Both approaches require adherence to quality standards – including the demarcation of the territory of production – to ensure that the good-will associated with the product is maintained. But where we differ is that we do not believe rights in a term acquired in one country should be required to be adopted in another country with no regard for consumers’ understanding of the term in that country or already-established rights there. 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