Draft Revision To Provide Higher Protection To GIs Fine-Tuned At WIPO

The contracting parties of the agreement protecting appellations of origin at the World Intellectual Property Organization are meeting this week to fine-tune a draft revision of this agreement to include geographical indications. The end of the week is scheduled to be devoted to a preparatory committee of a high-level negotiating meeting in 2015 to adopt the revision.

The tenth session of the Working Group on the Development of the Lisbon System is meeting from 27-31 October.

Mihály Ficsor of Hungary was re-elected chair of the working group. He said that the activities of the working group, “reached a new crucial stage.” As it now has a “clear mandate” to prepare for a diplomatic conference (high-level negotiating meeting) to revise the current Lisbon Agreement.

The working group is expected to clean up the draft revision text and the draft regulations for the three first days of the week, and then on the last two days hold a preparatory committee to determine the exact date and venue of the diplomatic conference, tentatively scheduled for May 2015. Portugal has offered to host the diplomatic conference.

Some WIPO members, most of which are not Lisbon Agreement members, tabled a proposal a few days ago asking that the draft rules of procedures of the diplomatic conference be amended so that all WIPO members can participate in the diplomatic conference in the same capacity (IPW, WIPO. 15 October 2014).

The discussions this week, Ficsor said, will focus on pending issues that were identified during the last meeting of the working group in June (IPW, WIPO, 29 June 2014).

The revision serves important goals, he said, in particular extending the international register which currently covers appellations of origin (AOs) to geographical indications (GIs). The revision should result in a single instrument covering AOs and GIs and providing a single and high-level protection for both, he said.

The 28 countries party to the Lisbon Agreement and observer countries yesterday started work on new versions of the Draft Revised Lisbon Agreement [pdf] on Appellations of Origin and Geographical Indications, and Draft Regulations [pdf] Under the Draft Revised Lisbon Agreement.

The current list of pending issues would be manageable during the diplomatic conference, Ficsor said, however, this session of the working group is an opportunity to further improve the maturity of the text. He remarked positively on the higher involvement of non-Lisbon member states in the discussions. The revision process is expected to result in a user-friendly system that will prove attractive enough to expend Lisbon membership, he said.

There are 21 pending issues to be discussed until 29 October, included in the document containing the draft revised [pdf, linked again here] Lisbon agreement. They include items pertaining to fees, protection against AOs or GIs acquiring a generic character, and prior trademarks.

Ficsor suggested that the 21 issues be grouped by themes to facilitate discussions. Referring to the document, Group A relating to applications and international registration procedure includes issues 2, 3, 4, 18, 19 and 20; Group B on provision related to the scope of protection of international registration includes issues 10, 11, 12, 13, 14 and 16; Group C on legal effects of international registration includes issues 8, 9, 15, and 17; Group D on fees and financing includes issues 5, 6, 7, and 21; and Group E regarding the title of the draft revised Lisbon Agreement includes only issue 1.

The meeting documents also include notes [pdf] on the draft revised Lisbon Agreement, and notes [pdf] on the draft regulations, which contain explanatory notes on each article and regulation.

During the first day of the meeting, delegates went over Group A, and part of Group B issues.

Protection against Imitation

In particular, Article 11 (Protection in Respect of Registered Appellations of Origin and Geographical Indications) was discussed. Like several other articles in the draft revision text, Article 11 has several options.

This article notably regards the protection of AOs and GIs against any use of the same kind of goods that do not originate in the geographical area of origin or do not comply with any other applicable requirements for using the AOs or GIs.

Option A specifies that such use covers cases where the good would amount to “usurpation or imitation [or evocation]” or which would be “detrimental to, or exploit unduly, its reputation.”

Option B deals with goods that are not of the same kind as those to which the AO or GI applies, and specifies that such use “would indicate or suggest a connection between those goods and the beneficiaries, and is likely to damage the interests of the beneficiaries.”

Lisbon Agreement members are supportive of option A, such as Portugal, France, Georgia, Iran, and Italy, while Australia said option B dealing only with goods that are of a different kind provides simplicity and clarity.

South Korea said the revised Lisbon Agreement would provide GIs with a higher protection than they enjoy under other international treaties. He cited the World Trade Organization Agreement on Trade-Related Intellectual Property Rights (TRIPS), which grants a higher protection only to wines and spirits. The delegate said he could not accept Option A.

The 28 Lisbon Agreement members are: Algeria, Bosnia Herzegovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Cuba, Czech Republic, North Korea, France, Gabon, Georgia, Haiti, Hungary, Iran, Israel, Italy, Mexico, Montenegro, Nicaragua, Peru, Portugal, Moldova, Serbia, Slovakia, Macedonia, Togo, and Tunisia.

GIs or AOs Becoming Generic, Prior Trademarks

Article 12 (protection against [acquiring a Generic Character][Becoming Generic] was also discussed on the first day of the meeting. France remarked on the number of brackets in the text and suggested a simpler drafting indicating that registered AOs and GIs cannot become generic as long as such AOs and GIs are protected in the party of origin. This was supported by a number of Lisbon members, such as Moldova, Italy, Georgia, and Portugal

The United States voiced concern about “long dormant foreign” GIs that could “pop up” and create havoc in the domestic industry of a country where domestic companies had been unaware of the GIs before their denunciation. This was supported by Australia and South Korea, which said it was concerned over the strong protection awarded to GIs.

The issue of prior trademarks, included in Article 13 (Safeguards in Respect of Other Rights) was also discussed on 27 October. Here, the article seeks to address the possible co-existence of AOs, GIs, and prior trademarks.

The article has two options. Option A allows the co-existence of trademarks and AOs and GIs, while option B stipulates that the protection of AOs or GIs in a contracting party, “shall be subject to the rights conferred by the prior trademark under national or regional law along with any applicable exceptions to those rights.”

Lisbon members favour option A, while the US and Australia argue that the co-existence with earlier trademarks should not be a default position. Option A, according to the US, would created a new international law, and would not appropriately respect member states’ sovereignty. It was argued that option A would put two conflicting identifiers for goods in front of consumers. Chile and South Korea also supported option B.

Proponents of the revision often underline the fact that a contracting party of the Lisbon Agreement and the upcoming revision are able to refuse to protect a new registration, for example because such registration has become a generic term in their country.

Image Credits: Flickr – ebifried