Revised WIPO Treaty On Appellations Of Origin On Course, Chair Says

Members of an international treaty administered by the World Intellectual Property Organization protecting appellations of origin last week worked on a draft treaty revision, which now includes geographical indications. Treaty signatories aim to hold a high-level negotiation in 2015 to approve the revision. Meanwhile, countries which do not use geographical indications have voiced concerns about the proposed revision.

The Working Group on the Development of the Lisbon System met from 2-6 December. The summary by the chair [pdf] was adopted on the last day of the meeting with slight changes.

The summary reports that Chair Mihály Ficsor of Hungary “noted and welcomed the significant progress that had been made at the present session on the basis of constructive discussions on issues of high importance involving not only members but also observer delegations paving the way for holding a successful Diplomatic Conference in 2015.” A diplomatic conference is a top-level UN treaty negotiation.

The objective of the revision of the Lisbon System is to attract a broader membership. The system currently includes 28 out of WIPO’s nearly 200 members. The inclusion of geographical indications (GIs) in the treaty which at present only protects appellations of origin (AOs) is considered to make it more attractive.

GIs are collective rights conferred to goods that have a specific geographical origin from which they derive quality, reputation and characteristics. AOs are a particular kind of GI, with stricter standards.

The Lisbon System, as it stands now, has an international register of AOs which are protected in all contracting parties, unless for specific reasons one or several of the parties have notified WIPO that they are unwilling to protect that particular AO. The revision would provide a register for GIs and the same level of protection the AOs are enjoying under the system.

The protection of GIs was the object of stalled discussions at the World Trade Organization and members, in the Council on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Under the TRIPS Agreement [pdf], wines and spirits enjoy a higher level of protection than other geographical indications.

Some countries not party to the Lisbon System, such as the United States and Australia, protect GIs exclusively through a trademark system and have voiced concerns that the revision does not accommodate the trademark system, which would prevent them from ever joining such a revised treaty (IPW, WIPO, 2 December 2013).

According to the meeting chair, a number of issues in the draft text have been clarified, and some brackets (indicating divergence) have been removed, he told Intellectual Property Watch. “We have managed to follow our roadmap and have taken important steps towards a diplomatic conference,” he said.

The working group was able to give “clear directions to the WIPO secretariat as to how the revised version should look like at the next session,” he said, referring to its instructions to modify the treaty.

Issues for Next Session

Discussions on some “bones of contention” were left to be discussed further at the next meeting of the working group.

For example, Australia, supported by the US, found that the proposal of a mandatory link to the geographical origins as proposed in Rule 5 (Requirements Concerning the Application) of the draft regulations [pdf] under the draft treaty [pdf], “is a very prescriptive requirement” unlikely to attract new members.

The US added that there are different interpretations of GIs under the TRIPS and that countries have made different policy choices in the implementation of the protection of GIs. US stakeholders, if required to show a geographical link, would be at a deficit as they would not have such information, the delegate said.

Another cause for concern for the US and some other non-members was the level of the application fees, which they said are too low and would not allow the system to be financially sustainable. Some countries countered by saying that higher fees might deter some countries from joining. Current fees are CHF 500 (US$ 560) for a registration of an AO.

The United States also had concerns on Article 10 (Protection Accorded by International Registration). The concerns were shared by Australia. In particular, the US delegate said, the obligations by contracting parties to protect AOs and GIs against any use “which would amount to its usurpation or imitation or evocation” (bracketed in the draft text), runs against the principle of a trademark system, which is an unfair competition system. The delegate said it would be very difficult for a judge, in that unfair competition system, to determine evidence to prove imitation or usurpation.

This infringement standard imply that terms that have already become generic could be held to be infringing, she said.

According to a source, if the Lisbon system were to attract a broader membership, countries joining the system would have to protect the GIs of all contracting parties, unless they have specific reasons to oppose such protection. Exporting countries, such as the US, which has a large export market in dairy products, could no longer use GI denominations such as feta cheese, gruyere or parmesan in countries party to the Lisbon System.

Homonymous GIs, Prior Trademarks

Another issue remaining open is the case of homonymous GIs, which are GIs having the same name. At the last session of the working group, countries were divided on whether to delete or retain the paragraph of Article 10 relating to homonymous appellations (IPW, WIPO, 3 May 2013).

It was decided at the last session that the paragraph would be deleted and replaced with a footnote to Article 10. Peru had asked for the deletion of the homonymous paragraph in Article 10 during the last session, and challenged the footnote this week.

Chile, meanwhile, said that the draft revised text lacked a provision to protect homonymous GIs and that the lack of such provision “is very far from what is done in practice.” The delegate said many bilateral agreements recognise and protect AOs and GIs which are homonymous.

Peru and Chile both have a registered geographical indication for “pisco,” an alcoholic beverage typical of their region. The WIPO secretariat has been asked to draft a new text on the subject for the next session.

Discussions also will continue on Article 13 (Safeguards in Respect of Other Rights), which addresses conflicts between GIs and prior trademarks. The current draft allows the co-existence between both systems of protection.

However, trademark standard rule follows the principle of “first in time, first in right.” The United States said that the provision in Article 13 related to prior rights is incompatible with trademark systems. According to the US delegation, this article “misinterprets” a ruling of the WTO in a case opposing the US and Australia against the European Union on GIs. The WTO Dispute Settlement Body decided in this case that “the TRIPS Agreement does not allow unqualified coexistence of GIs with prior trademarks.”

The US said that it is not opposed to the idea of coexistence but was expressing concerns on the conditions of the coexistence, which should be reflected in the text. A new drafting should be proposed by the WIPO secretariat at the next session.

Future Work

Ficsor told Intellectual Property Watch that the text of the draft revised Lisbon agreement and the draft rules are now “relatively” mature and the working group should now focus on controversial issues.

The working group decided to hold two more sessions before the diplomatic conference set to be held in 2015. A first meeting is expected to be convened in the first half of 2014. The date has not yet been announced.

According to the summary by the chair, the next session should focus on the examination and discussion of newly revised versions of the draft revised Lisbon Agreement and the draft regulations to be prepared by the WIPO secretariat. The second meeting should be held in the second half of 2014. The second meeting will be held in conjunction with the preparatory committee of the diplomatic conference, which will decide on the date and place of the conference.

The summary by the chair stated that at the next session of the working group resolved issues would not be reopened and proposals and discussions would be limited to pending issues.