Substantive Work On Amendment of Lisbon System Starts; New Language Proposed

World Intellectual Property Organization members negotiating a new version of a treaty protecting appellations of origin started fine-tuning the wording of the potential amended treaty’s articles, trying to find common language on remaining issues, such as trans-border geographical areas of origin, and the required information in applications.

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 taking place from 11-21 May. It seeks to amend the current Lisbon Agreement so that it includes geographical indications and allows intergovernmental organisation to become members of the new version of the agreement.

On 12 May, Miháli Ficsor, president of “Main Committee I” of the Diplomatic Conference issued a document (President Non-Paper No1) [pdf], proposing a methodology to address the remaining issues to be tackled by the 28 members of the Lisbon system.

The issues were grouped under four headings: issues concerning applications and international registration procedures; issues concerning provisions related to the scope of protection; issues concerning other provisions related to the legal effect of international registrations; issues concerning fees and the financing of the Lisbon System.

Main Committee I of the Diplomatic Conference is in charge of proposing for adoption by the conference, the substantive provisions of the new act and regulations, Ficsor said.

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

Trans-border Geographical Areas

Trans-border geographical areas refers to the case where a geographical area in which a product is made, for reasons of history for example, is now located in two different states. In some cases, which are few according to the WIPO secretariat, both countries decide to submit a joint applications.

Article 5.4 (Application – Possible Joint Application in the Case of a Trans-border Geographical Area) was discussed on 12 May, in conjunction with Article 2.2 (Subject Matter – Possible Geographical Areas of Origin), also considering trans-border geographical areas.

Ficsor submitted a textual proposal (President Non-Paper No2) [pdf] for Article 2.2 and Article 5.3 (Application Filed Directly by the Beneficiaries or a Legal Entity) and 5.4, taking into consideration comments by member states, and in particular a proposal [pdf] from Iran.

Article 2.2 is almost similar to the basic proposal, except for a small textual addition, and Article 5.4, which consisted of two paragraphs (a and b) has been reduced to the first paragraph, removing paragraph b which referred to the manner in which a joint application could be filed.

After a question by a non-Lisbon member, Ficsor specified that the possibility of a joint application would only apply to the members of the revised Lisbon agreement.

The document also provides a new wording for Rule 15 (Modifications), in particular stating that a “request for entry of a modification”, if it refers to a newly established trans-border geographical area of origin, be presented to the WIPO international bureau by the competent authority.

Competent Authority

Some textual proposals (President Non-Paper No 3)[pdf] for Article 5.2 (Application Filed by Competent Authority), and Rule 5 (Requirements Concerning the Application) were also tabled by Ficsor on 13 May.

In particular, the description of the competent authority in Article 5.2.ii has now been simplified and refers to “a natural or legal person having legal standing….” Ficsor explained on 13 May that this wording would avoid a closed list of possible subjects of law which could qualify under the provision.

The same reference to “natural or legal person having legal standing” has also been added to Rule 5.2iii (Requirements Concerning the Application).

Applications

Delegations also considered, as part of the pending issues, whether Rule 5.3 (Requirements Concerning the Application – Application – Particulars Concerning the Quality, Reputation or Characteristic) should be mandatory or optional.

The article presently includes three alternatives: alternative A making the provision mandatory; alternative B leaving the provision optional; and alternative C providing a middle ground.

Lisbon members were divided on which option should be retained.

According to Ficsor, after a first run of the remaining standing issues, which is expected to be completed on Thursday, Committee I will go back through all pending articles and rules for further work on wording.

On 12 March, a list of officers and committees [pdf] was also issued. This includes members of the credentials committee, main committee I, main committee II, and of the drafting committee.

Elena Bourtchouladze contributed to this story.