WIPO’s New Act For GIs: Not Much Ado About Place Names?

Recent negotiations at the World Intellectual Property Organization to create a new Act for the protection of geographical indications were intensive, with the outcome considered a landmark breakthrough by negotiators and a deep blow to the UN agency’s legitimacy by others. But a search on global coverage of and reactions to the new agreement raises the question of whether it has attracted broader attention.

On 20 May, member states of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration adopted the Geneva Act of the Lisbon Agreement. A signing ceremony was held the following day. This concluded a diplomatic conference held at WIPO from 11-21 May.

The negotiations were successful, but at times acrimonious, as a number of major economies (such as the United States, Japan, Australia and South Korea) argued it would affect their economies, but they were not allowed to vote on it. Their concern was the loss of export markets for some products affected the agreement.

Lisbon members, meanwhile, were pleased to have an agreement they said will improve the global protection of GI products, those with certain characteristics grown in a specific location.

Intellectual Property Watch conducted a cursory online search (in English) for news about and reactions to the agreement. It did not turn up much beyond one wire service article picked up around the world, a couple of items in the IP industry press, a US dairy industry journal story, and press releases/blog entries from some industry groups that were in the room for the talks. Where’s the buzz?

Reactions

So far, there have been widely varying commentaries from the affected intellectual property and food industry sectors. But there is little on details such as which export markets are at risk and their estimated value, which GIs need protection and what is their value, or how this agreement will affect longstanding negotiations at the neighbouring World Trade Organization for a GI register and the extension of higher-level GI protection to products other than wines and spirits. The WTO press office declined to comment on this latter question.

WIPO Director General Francis Gurry said in an interview with Intellectual Property Watch (IPW, WIPO, 25 May 2015) that protection could be expected to increase for non-agriculture, non-wine/spirits products. But there has been little sign of reaction outside of the agriculture and wine/spirits industries.

WIPO issued a press release on the outcome.

The European Commission Agriculture and Rural Development office issued a glowing statement on the outcome, including a short summary of key points.

The Organization for an International Geographical Indications Network (OriGIn), a Swiss-based GI industry group which participated in the negotiations, issued a press release hailing the outcome.

OriGIn quoted its president, Ramón González Figueroa, director general of the Consejo Regulador del Tequila, as saying, “The Geneva Act formally introduces GIs under its scope of application and provides a solid level of protection for both GIs and Appellations of Origin. This reflects an ongoing trend in national legislations increasingly providing such level of protection.”

“The Geneva Act introduces a number of flexibilities compared to the previous version of the Lisbon Agreement, which makes the new international system for the registration and the protection of GIs and Appellations of Origin attractive for a variety of legal systems,” he said.

Societa Italiana Brevetti, an Italian IP consulting firm, also praised the result in a release, saying that the Geneva Act “makes international registration easier for geographical indications.” One of the firm’s attorneys participated in the negotiations at WIPO with the European trademark group MARQUES. The Italian group gave a positive outlook for the new agreement, going so far as to suggest that the United States might join.

“One noteworthy change [to the Lisbon system] allows a state to ratify the Lisbon agreement regardless of whether it has specific national laws for the protection of geographical indications, as long protection is provided by different means, such as the national trademark system. This is one of several measures intended to make the Lisbon Agreement more flexible and encourage more countries to ratify, including those that do not have specific legislation on the protection of geographical indications such as the United States of America.”

But that may be wishful thinking, or even tongue-in-cheek, as the United States vociferously opposed the negotiation outcome based on having been excluded from voting and differences over provisions, and appeared more likely to challenge the new agreement than to seek membership.

The Consortium for Common Food Names (CCFN), a US-based industry group representing generic food names, had a dramatic take on the outcome, capturing the US view.

“The revised Lisbon Agreement is dangerously vague and does not adequately protect common names,” CCFN Executive Director Jaime Castaneda said in a statement. “Not only are the protocols on how to handle new GIs flawed, but countries that choose to use the Lisbon Agreement system are likely to trigger disputes as they run up against World Trade Organization and other trade commitments, as well as intellectual property obligations.”

CCFN’s statement was entitled, “WIPO members make forceful case in questioning the legitimacy and further usage of revised geographical indications system.”

It asserted that “New revisions to the Lisbon Agreement system for geographical indications (GIs) have been adopted using an illegitimate process, and the resulting agreement will be problematic for the countries that choose to use it, particularly in terms of protecting common food names and the erosion of existing intellectual property rights. These were messages shared by a strong coalition of nation members” at the diplomatic conference.

In perhaps equally – if oppositely – optimistic form, the CCFN said, “The heated debate demonstrated that protecting generic food and beverage terms – from ‘parmesan’ and ‘feta’ to ‘chorizo’ and ‘chateau’, is gaining increasing attention as a critical, global market access issue.”

Separately, MARQUES “Class 46” blog provided a series of reports from the negotiations, for instance here.

The International Trademark Association issued a short, neutral statement titled, “Negotiators have adopted the Geneva Act of the Lisbon Agreement of Appellations of Origin and Geographic Indications.”

And the European Communities Trade Mark Association (ECTA) had a blog post about the Act but does not appear to have had another after the conclusion.

Press Coverage

Meanwhile, mainstream press coverage has been particularly lacking. One news story from 27 May favouring the European perspective appeared in a variety of publications around the world. It turned out to be written by French wire service AFP (Agence France Presse). The AFP story as it appeared on Yahoo News is here.

The story contained views from GI industry group OriGIn and an unnamed ministry official from France, one of the biggest beneficiaries of the agreement.

Malay Mail Online titled the story, “Done deal to prevent fake Tequila, Roquefort or Parmagiano”. On CTV News, the title was, “Italian wine, French cheese, to get enhanced protection from knockoffs.” Others picking up the story included: Expatica Switzerland, NDTV, iAfrica, New Age Online, MENAFN Online, Capital FM Kenya, Yahoo Maktoob News, Yahoo News UK, and GlobalPost.

The article states: “’This puts us in a strong position to sell and defend our agricultural model,’ said a ministry source in Paris, which has long sought to take the touchy topic of geographical indication of traditional products off the negotiating table in trade talks — particularly with the United States.”

Calling it a “positive step,” the news story concluded: “The Geneva Act seeks to enshrine those agreements at an international level, offering what the ministry source described as protection from the encroachment of agrobusinesses with a large global reach marketing rootless products. ‘The American dairy lobby would love to see the adoption of a generic term for parmesan or mozzarella’ to boost substitute industries looking to take part of the market share of traditional appellation of origin goods, the source said.”

Curiously, while the story mentions French products that now will have to be protected elsewhere, it does not emphasise GI products from developing countries that French people will now have to protect.

A separate recent article shows the progress made by French wine producers in garnering GI protection in China.

In addition, industry press provided some coverage. The IPKat blog had a post right after the outcome that indicated it would need to do more analysis to understand the significance of the agreement. It also noted the dearth of reactions as of the conclusion of the diplomatic conference. The exception seemed to be MARQUES, which had a series of blog posts updating its followers on goings-on during the talks. Managing IP also had a basic story on the outcome, as did the World Intellectual Property Review.

Indian legal blog Spicy IP had several items on the negotiation.

Perhaps the most strongly worded was a story in DairyReporter.com, headlined, “Extending Lisbon System to GIs done ‘at the expense of generic users’: USDEC”. This refers to a statement from the US Dairy Export Council. The article includes some strongly worded statements from the US dairy industry.

On the other side of the spectrum, FoodNavigator.com had a story entitled, “EU Celebrates boosted protection for foods after PGI negotiations.” (PGI appears to refer to protected geographical indications.)

At Lexology, a UK attorney posted a short item called, “Good news from Geneva for Geographical Indications” in which he says GIs are “an extremely valuable asset.”

The International Centre for Trade and Sustainable Development (ICTSD) also had a summary report.

Meanwhile, Swiss-based Ellen’s Wine World wrote about the new Act and observed, “The Lisbon Agreement has long been contentious due to different approaches to the use of names in different parts of the world. The classic example is Parmesan, with Lisbon countries and the European Union agreeing that it is a protected name for cheese from Parma, Italy, while the US cheese industry argues it has become a generic name for a type of cheese.”

Background

The Geneva Act was the result of a consensus between member states that are parties to the Lisbon Agreement and “special” delegations, the European Union and the African Intellectual Property Organization (Organisation Africaine de la Propriété Intellectuelle – OAPI). In addition, various WIPO member states that were not parties to the Lisbon agreement, participated in the conference as observers, although they did not have full participation and voting rights.

The result of the Geneva Act is that protection has now been extended for geographical indications. The major change is that there will now be an international register of GIs where previously this was only available for appellations of origin (IPW, WIPO, 25 May 2015).

A GI gives the right holder a right to prevent third parties from using it if their product does not conform to the applicable standards.