WIPO Members Propose Changes To Draft Legal Instrument Protecting GIs

In the run-up to the May high-level negotiating meeting to amend a World Intellectual Property Organization treaty to enhance the protection of geographical indications, member countries were invited to suggest changes to the basic negotiating text. Ten countries issued proposed changes by the 1 February deadline, some asking for full participation of WIPO members in the negotiations of the 28-member treaty.

The Diplomatic Conference is scheduled to take place from 11-21 May.

There are two negotiating texts under discussion:

The Basic Proposal for the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications is available here [pdf].

The Basic Proposal for the Regulations under the New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications is available here [pdf].

The ten countries’ proposed changes are available on the WIPO website, and are in the process of being translated.

The adoption of a new Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, as proposed would include international protection for geographical indications (GI), which are place names for products with specific qualities and characteristics linked to its geographical origin. The new Act would only be applicable to member countries.

Appellations of origin are geographical indications with stricter requirements. Famous appellations of origin include tequila, and parma ham.

Countries submitting suggestions include: Algeria, Chile, Colombia, Israel, Russia, South Korea, Thailand, Togo, Tunisia and the United States. Algeria, Togo, Israel and Tunisia are Lisbon members.

The submissions contain a variety of general statements as well technical and legal details on aspects of the basic negotiating texts.

Pushback from Non-Lisbon Members

The United States reiterated its request that all WIPO members be allowed to participate fully and equally in the May 2015 Diplomatic Conference.

“In its current form, unfortunately, the Basic Proposal is not consistent with national GI systems that do not operate like appellation of origin systems, limiting the number of countries who could accede to the new Act,” the US proposal [pdf] said.

The US also said that three “fundamental” principles should be respected: “1) territoriality; 2) due process; and 3) GIs as private rights.”

“This means that countries should have the ability to make their own determinations of protection of GIs rather than being bound by decisions made in other countries applying their own systems; that prior users in each country should have the opportunity to assert appropriate defenses; and that governments cannot take the place of private parties in prosecuting or enforcing rights in GIs,” it said.

According to the US, the current draft amendment would be unattractive to potential new members as it would induce several hurdles. This includes that “new contracting parties would have to examine all of the nearly 850 existing international registrations within 1-2 years, as well as examining any new applications filed into the system within 1 year, without any fees provided to cover the cost of processing those applications.” They suggested that contracting parties should have “the ability to process applications using existing national systems with appropriate fees.”

South Korea also requested in its proposal [pdf] that “…the Diplomatic Conference to revise the Lisbon Agreement should be open to all WIPO Member States and should offer full participation including equal voting rights…” as the amendment of the Lisbon System is expected to impact all WIPO members and not only the 28 members of the system. Chile concurred in its statement [pdf].

Israel, a Lisbon member, did not mention the need for full membership participation in the diplomatic conference in its statement [pdf], despite the fact that the country was a strong proponent of this option earlier.

South Korea said it is concerned about the financial sustainability of the system and proposed the introduction of a maintenance fee, which has been resisted by a number of Lisbon members. The proposal also underlines the fact that under the current draft, GI protection would exceed the level of protection awarded by other international treaties.

Togo, for its part, said in its proposal [pdf] that a maintenance fee would be burdensome for developing countries. Tunisia in its proposal [pdf] also supported reduced fees for developing countries and least developed countries, but kept the possibility of a maintenance tax.