GIs Make A Controversial Re-Entry Into WIPO Committee On Trademarks 21/03/2014 by Catherine Saez, Intellectual Property Watch 1 Comment Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (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)Geographical indications appear in the name of the World Intellectual Property Organization committee on trademarks, but had been neglected there for years, merely appearing on the agenda. Now the issue has actively returned to the committee, seemingly challenging efforts in a parallel working group at WIPO. GIs refer to products that owe particular qualities, characteristics and reputation to a specific geographical origin. Parallel discussions have been taking place in a separate WIPO working group tasked with finding ways to widen the membership of a WIPO-administered treaty on appellations of origins, which are GIs with stricter rules. The prospect of an amendment to the treaty to include GIs have rekindled activities on GIs at the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT), meeting from 17-21 March. The working group has been working toward convening a 2015 diplomatic conference (final treaty negotiation) on the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration includes 28 member countries. Questions on Lisbon System Working Group The United States tabled a proposal [pdf] for this session requesting the SCT to revive work on GIs on the basis of its proposal and for the WIPO secretariat to prepare a survey of current GI regimes. “The Lisbon Union is effectively presiding over the only geographical indications forum at WIPO at the current time and the SCT is not even at the table,” he said. The US delegate argued that the GI regime the Lisbon Union has designed is both discriminatory and exclusionary yet relies on the rest of WIPO to fund its diplomatic conference and its continuing operations. “The demand for WIPO members to subsidise its GI filing system appears to be consistent with the domestic regimes of Lisbon Union members who demand and rely on public money to pay for the creation and enforcement of private property rights,” he remarked. Argentina and Canada supported the US proposal, as well as Chile, Japan, Israel (which is a member of the Lisbon Union), South Korea, Uruguay, Paraguay, Australia, and South Africa. GI Proponents See US Challenge to Lisbon The European Union said it did not support the US proposal, neither did France, Iran, Peru, Switzerland, Georgia, Hungary, which said it does not agree that the SCT could intervene or overrule the work and results of a working group established under an independent WIPO-administrated treaty. It would set a bad precedent, the delegate said. On financing matters, the Hungarian delegate said, it would be easy to find further examples from WIPO-administered treaties that are operating in a non-self-financing manner. Portugal added that it was doubtful that an additional survey would have any added value, and charged that the US is in fact challenging the Lisbon system. “The idea of having a discussion of desirable features on a system for the international registration of GIs at WIPO or a possible Lisbon replacement or alternative that represents a more inclusive GI filing system as set out in the US proposal constitutes a direct challenge to the Lisbon system review process currently under way,” the delegate said. Portugal, he said, attaches a great deal of importance to the Lisbon system review, as reflected in the country’s offer to host the 2015 diplomatic conference. Several countries noted that the SCT is not the competent body to discuss budgetary or procedural questions pertaining to the Lisbon Union, such as the Central European and Baltic States Group, and Italy. Italy said the US proposal’s main goal is to block or delay the work of the working group on the revision of the Lisbon Agreement. “To our greater concern, the proposal appears to put into question the existence of Lisbon system as it is now,” the delegate said. The Lisbon system, he said, was established more than 40 years ago and serves producers, including rural, small and medium ones, from 28 sovereign states. The goal of the revision is not to impose a single way of protecting GIs, he explained, nor is it to force a template or paradigm for multilateral norms. Countries who did not support the US proposal did not argue against the SCT resuming its work on GIs but said they would prefer that the focus for the SCT’s future work be the protection of country names and GIs in the internet domain name system. Protecting GIs in the Domain Name System On 19 March, the Czech Republic, Germany, Hungary, Italy, Moldova, and Switzerland tabled a proposal [pdf] on the protection of geographical indications and country names in the domain name system. According to the proposal, “the introduction of new generic top level domain names (gTLD) resulted in new undesirable possibilities for registration and use of domain names that violate intellectual property rights.” The proposal aims at extending the scope of the WIPO Uniform Domain Name Dispute Resolution Policy (UDRP) to country names and geographical indications. The co-sponsors also ask that the list of important geographical names of the Internet Corporation for Assigned Names and Numbers (ICANN), which has technical oversight of the domain name system, be extended to GIs. The proposal also calls for the WIPO secretariat to prepare a working document with the involvement of both member states and other stakeholders presenting the hurdles in the protection of GIs against wrongful registration and use of domain names, with the purpose to adopt a joint recommendation to revise ICANN’s Application Guidebook. This proposal was supported by Portugal, Romania, Ukraine, Poland, and Georgia. Jamaica and Uruguay said their needed additional time to study the document. The United States opposed the inclusion of GIs in the UDRP. Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (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) Related Catherine Saez may be reached at email@example.com."GIs Make A Controversial Re-Entry Into WIPO Committee On Trademarks" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.