Lisbon GI Revision A Hot Topic As Members Prepare For Treaty Talks

A proposed amendment to the Lisbon Agreement protecting appellations of origin at the World Intellectual Property Organization is the object of heated discussions between proponents of geographical indications and countries favouring other systems such as trademarks to protect such intellectual property. A side event to this week’s WIPO General Assemblies gathered GI proponents to ponder the future of the agreement.

The 54^th annual WIPO General Assemblies are taking place from 22-30 September.

A working group on the Lisbon Agreement has drafteda revision of the agreement to include geographical indications, and allow international organisations to join. A decision was taken last year by the Lisbon Assembly to convene a high-level negotiation (diplomatic conference) in 2015.

The working group was set up in 2008, following a decision by the Lisbon Assembly to study ways to increase the Lisbon Agreement membership, currently at 28 members. The 1958 Lisbon Agreement is the treaty establishing the international registration and protection system for AO administered by WIPO (“the Lisbon System“).

Today, the WIPO Coordination Committee, the member state executive body, is expected to examine the subject of the revision of the Lisbon Agreement, at the request of the United States. The US has raised a point about the convening of a diplomatic conference. A few countries have noted that geographical indications are part of the work of the WIPO Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications (SCT).

On 24 September at WIPO, the organisation for an international geographical indications network (oriGIn), the National Industrial Property Institute of Portugal, and the Portuguese mission in Geneva jointly organised a workshop on the future of the Lisbon System for the International Registration of Appellations of Origin.

Matthijs Geuze, head of the International Appellations of Origin Registry at WIPO, presented the system and the main items under discussion in the draft revised Lisbon Agreement.

There are currently different methods used to protect GIs, he said, such as trademarks for an individual use, and for collective marks, certification marks, geographical indications, appellations of origin and indications of source, for collective use.

The 10th session of the Lisbon Working Group is scheduled to take place from 27-31 October, according to Geuze, and include a preparatory committee to prepare for the diplomatic conference in the spring of 2015. Portugal has proposed to host the diplomatic conference, he said.

GI Producers, IP Offices

Speaking during the workshop were several GI producers.

Alberto Ribeiro de Almeida, head of the Legal Department of the Port and Douro Wines Institute of Portugal, underlined the importance of the revision of the Lisbon Agreement. Although GIs are older than trademarks, he said, it is difficult for GIs and AOs to be recognised.

The Lisbon Agreement needs more members and more energy, he said.

Fernando Cano Treviño, representative for Europe for the Consejo Regulador del Tequila in México, said tequila has an annual production of 230 million litres, provides 30,000 jobs, 80 percent of which are in the fields, and represents an export value to 120 countries of US$1billion.

However, he said, the costs of registration and protection of the tequila GI are very high. The cost of registration amounts to Euros 880,000 (about US$ 1.1 million), while in 2013 the organisation spent US$900,000 in legal actions and trademark oppositions, he explained.

Trademark offices were also invited to speak at the workshop.

José Luis Londoño Fernández, deputy superintendent for industrial property in Colombia, said GIs are powerful toolsfor competition, and Colombia has 21 AOs, with several other candidates. Not yet a member of the Lisbon agreement, Colombia has been an observer and is in favour of including GIs in the Lisbon System, he said.

Maurice Batanga, director of legal affairs and cooperation of the African Intellectual Property Organization (OAPI), spoke about OAPI, an international organisation including 17 French-speakingAfrican states. According to the Bangui Accord, OAPI is a central IP office registering all IP rights which are valid in all member countries.

OAPI cannot join the Lisbon System as the system currently cannot accept international organisations, and it is not possible for OAPI’s individual member states to join, as none has a national IP office. If the amendment is accepted, OAPI is willing to join the system, Batanga said, as OAPI considers GIs as having a prime role in the economic activities development process of African countries, he said.

Felix Addor, deputy director general of the SwissFederal Institute of Intellectual Property, presented the expectations of a “non-member state.”

He said current disadvantages of the Lisbon System included its small number of members and the fact that it is limited to the protection of one sub-category of geographical indications. “Nobody takes Lisbon seriously,” he said.

Switzerland has worked actively as an observer in the working group since the beginning of the discussions, he said, adding that every country could have done the same.

Advantages of the current Lisbon System, he said, include the fact that it constitutes: a simple and effective system of notification; a simple, clear and effective standard of protection; the automatic and direct protection of registered AOs in all contracting countries (unless they voice an opposition); and a simple procedure for refusal of protection in a contracting party.

Swiss expectations regarding the amendment, Addor said, are to update the Lisbon Agreement taking into account “international standards” concerning the protection of AOs and GIs, and preserve the simplicity and effectiveness of the registration and protection system.

Addressing concerns voiced in the past by some member states that GIs were already under discussion at the World Trade Organization, Addor said WIPO has a leading role in developing international standards for the IP system and has a complementary role to the WTO.

Unlike the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), which is binding on all WTO members, WIPO can develop more tailored treaties corresponding to the needs of interested WIPO members, since there is no obligation to be a contracting party, he said.

From the audience, a US delegate remarked that the diplomatic conference to be convened next spring should be open to all WIPO members and that WIPO should fund participants, the way it did for the last two diplomatic conferences. All WIPO members are paying for the Lisbon System, the delegate said, and all members should have a say in the diplomatic conference going forward.

Presentations from the workshop are available here.

 

Image Credits: European Commission