Lisbon Members Near Completion Of New Act On Geographical Indications

After a week of drafting, a handful of World Intellectual Property Organization members – with often divergent input from other WIPO members – are close to concluding a new international agreement on the protection of geographical indications.

Negotiations for the new act to the WIPO-managed Lisbon Treaty protecting appellations of origin are scheduled to conclude today. Lisbon members hope to hold a signing ceremony tomorrow.

The 28 Lisbon members were able to produce texts of what could become the new act of the treaty, with few remaining issues to be solved. But the remaining issues are at the heart of the divide between two different ways of protecting geographical indications globally, and how to address the difference in the treaty.

The Diplomatic Conference for the Adoption of a New Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration is taking place from 11-21 May.

On 19 May, Mihàli Ficsor of Hungary, president of Main Committee I ,which is negotiating the substantive issues of the text, issued a consolidated version of Articles 1 to 20 (President Non-Paper No 12) [pdf] of the potential new act of the Lisbon Agreement, along with a consolidated version of the regulations (President Non-Paper No 13) [pdf] of the new act.

Remaining issues in this consolidated version were Article 11 (Protection in Respect of Registered Appellations of Origin and Geographical Indications), Article 12 (Protection against Becoming Generic), Article 13 (Safeguards in Respect of Other Rights), and Article 17 (Transitional Period).

Discussions on those articles on 19 May, as well as during the past week, illustrated the two different means of protecting geographical indications (GIs) and appellations of origin (AOs) in the world. The 28 members of the Lisbon system, as well as a number of other countries, protect GIs and AOs through a sui generis system. Another set of other countries, including Japan, the United States, and Australia, use the trademark system to protect GIs.

All members are contributing to the negotiations, but in the end, only Lisbon members can vote on the final language.

Most Lisbon members supported the consolidated texts, including the wording of Articles 11 (in particular 11.2 – Content of Protection in Respect of Certain Uses), 12, 13, and 17. Costa Rica however disagreed with the wording of Article 11.2 saying it did not agree with its current national legislation which had been crafted to accommodate both GIs and trademarks.

Some non-Lisbon members, expressed concerns about Article 11.2 and 12. Australia said the articles as presented did not offer a balanced outcome that could accommodate both the trademark system and the sui generis system. Japan added that as such, Article 11.2 would cause uncertainty.

Article 11.2 in the consolidated version states that the protection shall also apply against imitations of AOs or GIs, even in the case where the true origin of the goods is indicated, or if the AO or GI is used in translated form or is accompanied by terms such as: style, kind, type, make, imitation, method, as produced in, like, similar, or the like.

The United States acknowledged that the text reflects “considerable compromise and a number of provisions reflect consensus,” however, it raised sharp concern about the pending articles. In particular, the US said Article 11.2 goes “well beyond TRIPS [World Trade Organization Agreement on Trade-Related Intellectual Property Rights]” and what the trademark system can do.

On Article 12, the US said it appears to prevent countries that protect GIs with trademark systems to join the future treaty.

Article 12 states that registered AOs and GIs cannot be considered to have become generic in a contracting party. The Article contains a footnote referring to prior use.

Late night informal consultations on Article 11 and 12 could not solve remaining divides and are expected to remain in the consolidated version to be submitted for adoption.

Committee II – Administrative Issues

President of Main Committee II Vladimir Yossifov of Bulgaria also tabled a consolidated version (President Non-Paper 3) [pdf] of Article 21 to 34, with few remaining open issues, in bold in the text. Committee II is dealing with administrative issues.

Remaining issues primarily concerned Article 24 (finances) and the matter of the financial sustainability of the Lisbon system. Article 24.2 refers to sources of financing of the budget and after minimal edits, it was deemed ready to be submitted for adoption by the plenary session.

Article 24.4 (Establishing the Special Contributions…) refers to the establishment of a contribution by member countries, and how this contribution should be calculated. There was three alternatives in the consolidated text. One of them based the calculation upon the class system of the Paris Convention for the Protection of Industrial Property, where contributions are calculated according to countries’ level of development.

The second alternative, which was proposed by the US, suggested that the contributions of each contracting party be proportional to their relative number of registrations in the Lisbon System.

The third alternative, proposed by Moldova, combined both possibilities.

The secretariat was asked to provide a financial assessment [pdf] of each solution.

Most Lisbon members indicated their preference for alternative C, as being a middle-ground solution, as well as the United Kingdom. The US said the second alternative would be simpler to implement. Alternative C was the only one retained for the final draft to be presented to the plenary for adoption.

The WIPO secretariat is expected to produce final version of the consolidated texts for approval on 20 May.