Lisbon Agreement Members To Move Ahead With Treaty Talks Despite Resistance

The revision of a World Intellectual Property Organization agreement to include geographical indications, raising their status, was challenged in vain by some countries in the past week. In addition, this week’s WIPO General Assembly has been working intensively on a range of other issues.

At issue is the little-known Lisbon Agreement for the Protection of Appellations of Origin and their International Registration. WIPO members have been stirring on the issue ever since the decision was taken by the Lisbon Union at the 2013 General Assembliesto convene a high-level treaty conference to adopt the revision in 2015.

Opponents to the revision contend that including geographical indications in the Lisbon Agreement is not merely a revision but creating a new treaty, and thus are asking that all WIPO member states be allowed to participate in the upcoming diplomatic conference, on equal footing with the 28 current Lisbon Agreement members. WIPO has 184 members.

During this week’s WIPO General Assemblies, the United States submitted a request for an agenda item to the WIPO Coordination Committee, the member state executive body, asking for advice on the conditions of participation in the diplomatic conference. Coordination Committee proceedings are closed to all but committee members.

According to sources, discussions in the Coordination Committee on 25 September did not result in a decision, since members could not agree on a definite answer.

The WIPO General Assemblies, taking place from 22-30 September, include the assembly of the Lisbon Union.

Lisbon Assembly Debate, Preparatory Committee

Two documents were considered under the Lisbon Union agenda item. The first one concerned the review of the Lisbon System [pdf], and the second one was a proposal [pdf] to update the fee schedule of the Lisbon Agreement.

The proposed revision of the Lisbon System would extend the protection awarded to appellations of origin under the system to GIs, set up an international registration for GIs, and allow international organisations to join the system.

According to the document on the review of the system, the preparatory committee tasked to prepare the diplomatic conference and to decide on the place and date of the conference, will be held on 30-31 October in conjunction with the 10th session of the Lisbon Working Group.

The diplomatic conference is expected to be scheduled for May 2015, according to a source.

During the October session of the working group, Lisbon Agreement members are expected to “technically” prepare the texts of the draft Revised Lisbon Agreement and the draft Regulations for the diplomatic conference, and work “on reducing the number of pending issues, where possible.”

On 25 September, a number of countries, mostly European, stated their support for the diplomatic conference and said the matter of deciding on the participation in the diplomatic conference would be a matter for discussion at the preparatory committee in October. The countries included the Czech Republic, Romania, Italy, Hungary, Slovakia, France, Greece, Serbia, Moldova, and Portugal, which has offered to host the diplomatic conference. The European Union said it supported the progress made in the working group, as did Switzerland.

Another group of countries requested that the diplomatic conference be opened to all WIPO members, such as the United States, which said it opposes the Lisbon Assembly convening a very “closed” diplomatic conference to include geographical indications. It also said it is “deeply troubled by the Lisbon Union’s efforts to push a one-sided GI approach at WIPO without the opportunity for meaningful input from larger WIPO memberships with different views and approaches.”

The inclusion of GIs in the Lisbon Agreement is not a mere revision but a new subject matter and a new treaty, the US delegate said.

“We oppose any draft treaty text that does not provide for a financially stable and self-sustaining international registration system,” she said, adding that the Lisbon System has a significant deficit, and is “financially unsustainable going forward.”

Although disappointed by the lack of a decision from the Coordination Committee, the delegate said the US “will continue to explore all possible options to ensure appropriate openness and participation in any new diplomatic conference.”

Australia also said that the diplomatic conference should be open to all WIPO members for equal participation, as did Chile and New Zealand, which said it supports work on GIs under the WIPO umbrella but such work should reflect all WIPO members and be flexible enough to take into account different systems of protection. Argentina, South Korea and Uruguay also supported the US statement.

The Lisbon Assembly took note of the document and of the progress made in the preparation of the diplomatic conference in 2015.

The preparatory committee for the diplomatic conference will consist of the member states of the Lisbon Agreement, but is also open to other states and organisations as observers, a source said. The same format is envisaged for the diplomatic conference, the source said.

The preparatory committee will have to decide whether other WIPO member states can participate on an equal footing with Lisbon member states.

Sorting Out Relation to TRIPS

Meanwhile, some WIPO members, in particular the United States, have been saying that discussion on GIs were already underway at the neighbouring World Trade Organization.

Discussions at the WTO Council for the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) on geographical indications, stuck for years, had focussed on creating a multilateral register for wines and spirits, and extending the higher protection level those products receive to all other GIs.

All products are covered by TRIPS Article 22, which provides that GIs have to be protected to avoid misleading the public and prevent unfair competition. Article 23 provides that wines and spirits have to be protected even if misuse would not cause the public to be misled, subject to exceptions, such as when a name has become generic, or when a term has already been registered as a trademark, according to the WTO.

The proposed revision of the Lisbon Agreement would give equal rights to all GIs, and the same level of protection currently enjoyed by appellations of origin (AOs) under the agreement. It would also set up an international register of GIs, which already exist for AOs.

Under the current Lisbon Agreement, any Lisbon member state has the right to refuse protection of an appellation of origin on any ground. According to a source, this will remain possible under the revised agreement.

The objective of the negotiators in the Lisbon Working Group is that the revised agreement will safeguard prior trademarks in the same way as the TRIPS Agreement, the source told Intellectual Property Watch.

The matter of prior use as generic is still under negotiations at this stage in the Lisbon Working Group, the source said.

Raising Fees, and Some Doubts

A new fee schedule has been proposed to become effective on 1 January 2015. For example, an international registration fee would amount to a one-time fee of CHF 1,000, and the modification of an international registration would cost CHF 500. The document also notes the possible introduction of a maintenance fee in the context of the revision of the Lisbon Agreement.

The United States said the new fee schedule still would not make the Lisbon System financially sustainable, and said members to the Lisbon Agreement should participate in the funding of the system.

Italy said it needed more time to consider the new fee schedule, although it attaches great importance to the financial situation of the Lisbon System. France supported the increase of existing fees, but not the establishment of maintenance fees, supported by Italy.

Since no consensus was found on the decision paragraph on the new fee schedule, the issue was sent back to the working group to continue discussions.

Other Issues at General Assemblies

The General Assemblies is addressing a number of other, unrelated issues, some still the subject of intensive informal meetings.

Some outstanding issues were the object of informal discussions during the past week, such as the governance of WIPO and a new definition of development expenditure to be considered in the WIPO budget. The issues were on the Assembly agenda under the report of the Program and Budget Committee (PBC), which met in early September and could not resolve them.

No agreement was found on either issue, and the General Assembly, in its decision paragraph, “requested the PBC to continue the discussions on governance at WIPO and the definition of development expenditure at its 23rd Session.”

The General Assembly took note of the list of decisions [pdf] taken by the September PBC, and approved the recommendations made by the PBC.

The decision by the General Assembly did not include efforts to create guidelines and a plan for establishment of new WIPO external offices. Further discussions were to take place this week, in particular on the potential number of external offices, which has been one of the primary issue.

In addition, still under discussion is the potential design law treaty on which the issue on how to deal with technical assistance was not solved.

Also under discussion is the work programme on the Intergovernmental Committee on Genetic Resources, Traditional Knowledge and Folklore (IGC). One of the issues is the different perceptions on the level of maturity of the three draft texts, which some see as ready for a diplomatic conference in 2015, while some others think more work is necessary on those texts.

The future work programme of the Standing Committee on Copyright and Related Rights is also being discussed without solution so far. At the heart of the discussion is the repartition of time and attention to the three topics currently discussed in the committee: a treaty for the protection of broadcasting organisations’ rights, and two sets of limitations and exceptions to copyright, one for libraries and archives, the other for education, research and people with disabilities other than visual impairment.

Developing countries are pushing for equal treatment and time of the three issues in the committee and are seeking a treaty to establish copyright limitations and exceptions, while developed countries are reluctant to engage in discussions on a binding instrument.

 

Image Credits: Catherine Saez