At WIPO, 11 Members Sign New Act Protecting GIs, More To Follow 21/05/2015 by Catherine Saez, Intellectual Property Watch 3 Comments Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window)Today, the signing ceremony of the new World Intellectual Property Organization agreement to protect geographical indications was held. On the first day, 11 members, mostly current Lisbon members, signed the Geneva Act of the Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications. Existing Lisbon members Peru, Togo, Bosnia Herzegovina, Burkina Faso, Congo, France, Gabon, Hungary and Nicaragua signed the new act. Non-members Romania and Mali also signed. The Geneva Act of the Lisbon Agreement is available here [pdf] 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 was held from 11-21 May. Some 54 WIPO members signed the final act of the diplomatic conference, indicating their presence. Several current Lisbon members which did not sign the new act – Italy, Portugal and Iran – told Intellectual Property Watch that procedural questions prevented them from signing today but that they will be signing the new act in the near future. The Act’s adoption upset some non-Lisbon WIPO members, who were not allowed to vote but argued that the Act could impact non-members and as well they could be asked to contribute funds to it. Earlier yesterday a draft text [pdf] of the new act was issued by the secretariat, as well as draft regulations [pdf]. Both documents were approved by committees in charge of conducting negotiations on the proposed revised agreement. The text and regulations were combined into the single final document. The main aims of the revision were to modernise the Lisbon Agreement and to make it more attractive to new members, while preserving the principles of the current treaty. The revision sought to include geographical indications in the system and to allow intergovernmental organisations to become member of the new act. The Lisbon system had an international register of appellations of origin (AOs), and the new act will extend this register to include geographical indications (GIs). Once the new act is implemented, GIs of all members of the new act will be protected in all other members of that new act, through a single registration. The Geneva Act of the Lisbon Agreement will enter into force three months after five eligible parties have deposited their instruments of ratification or accession. Some countries, especially those in Europe, protect GIs through a sui generis system (a system especially crafted for the protection of GIs), while others protect GIs through a trademark system. Some of the countries that use trademarks, such as the United States and Australia, said the new act of the treaty will preclude such countries from becoming members as the text is incompatible with trademark law. Lisbon members said the new instruments would serve economic interests, particularly for developing countries. Iran said the new version of the Lisbon agreement would benefit producers in developed and developing countries to protect their culture, tradition, and heritage at reasonable costs. Algeria remarked that the Geneva Act will be a breakthrough for developing countries, which rely on agricultural development and have a growing interest in AOs and GIs. France remarked on the fact that the negotiations for the Geneva Act had gone beyond traditional divisions in WIPO discussions and hoped that new dynamic and cross-alliances developed during the diplomatic conference could be used in other WIPO contexts. But some non-Lisbon members said a closed negotiation in a multilateral agency might have a negative effect on WIPO. Disturbing Precedent, Undermining WIPO Legitimacy? After the draft text of the new act was adopted, several WIPO members who participated in the negotiation but were not permitted to vote had concerns about the effect of resulting text on trademark protection of GIs, and about the inclusiveness of the talks. Of WIPO’s 188 members, only 28 members of the Lisbon system were allowed to vote. US Ambassador Pamela Hamamoto delivered a strong statement of concern about the outcome of the diplomatic conference. Referring to the fact that the voting rights were reserved to the 28 members of the former Lisbon Agreement, she said “the decision taken before the conference to strip 160 WIPO members of meaningful participation rights has been a negative undercurrent leading up to and throughout the negotiation.” “As a result, without full participation rights, the United States and the great majority of WIPO members have been negotiating at a profound disadvantage throughout this diplomatic conference,” she added. The decision to adopt the Geneva Act of the Lisbon Agreement departs from precedents, she said, and “presents broad and alarming implications for WIPO as an institution.” “We do not believe that the ends justify the means,” she added. Hamamoto also underlined the US concerns about the financial sustainability of the Lisbon system, which she said runs a chronic deficit. The US is “highly concerned by the confirmation this week that this deficit is financed by fee income from the Patent Cooperation Treaty and the Madrid Agreement Concerning the International Registration of Marks filing systems.” The practice is “particularly perverse,” she said, given that the fees of patent and trademarks applicants from the largest contributors of the PCT and Madrid system are subsidising GI beneficiaries, while at the same time those countries are unable to join the Geneva Act because of its lack of compatibility with the trademark systems. Hamamoto also said many of the US stakeholders are small producers and small businesses, including those relying on trademark protection and continued generic use. “What happens to trademark holders and generic users who have relied on these legitimate uses, some for generations for their livelihoods and those of their employees?,” she asked, illustrating the impact the new act could have on non-members. Australia said some articles in the Geneva Act constitute barriers for countries using a trademark system. However, it acknowledged an attempt to be inclusive and the flexibility of the two negotiating committees to “conduct business in the most inclusive way possible,” and “Lisbon members’ genuine efforts” to accommodate proposals by non-members. The Australian delegate said the Geneva Act could have a detrimental impact on Australian enterprises, and the “flawed nature” of the conference made it impossible for Australia to defend those interests, while Lisbon members sought to promote the economic interests of their own businesses. South Korea also expressed doubts regarding procedure. Uruguay questioned the legitimacy of the process. The delegate said if Lisbon members had permitted the whole WIPO membership to vote on the new act of the Lisbon agreement, by their own admission, they would have been outvoted. This shows that they went towards a direction which is different than the one which would have been favoured by most WIPO members. Panama and Argentina also criticised the process and the outcome of the diplomatic conference, as well as Japan. Prospective New Members Line Up Germany, Switzerland, Romania, Mali, Russia, Morocco, Niger, China and Côte d’Ivoire welcomed the adoption of the Geneva Act. The African Intellectual Property Organisation (OAPI – Organisation Africaine de la Propriété Intellectuelle), and the European Union were allowed to participate in a special status at this week’s negotiations, and will be able to join the new Act. OAPI members Mali, Niger and Côte d’Ivoire said they will join the Act, as did EU members Germany and Romania. China, Russia and Switzerland also said they will consider signing. Niger said it has an agricultural economy and the new instrument could allow it to suppress misuse of AOs and allow producers to protect agricultural and artisanal products, and derive greater economic value out of those products. The delegate called for assistance and capacity building for different groups of producers. Articles of Contention Some articles were identified by Australia, the US, Japan and South Korea as constituting issues for trademark-based system in the draft texts presented in the committees on the last day. For example, the US said it had serious reservations about the text and felt that their “extended comments” and drafting suggestions to achieve consensus were not taken into account. The delegate cited Article 7 (Fees), 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), Article 14 (Enforcement Procedures and Remedies), and Article 17 (Transitional Period). In particular, the US delegate said, trademark-system-based countries could not accede the treaty without maintenance and renewal fees (Article 7), and that the protection awarded to AOs and GIs (Article 11) was too broad to be applied to the trademark system. Australia expressed disappointment at the outcome of discussions and said it was concerned by Article 11 and 12. Lisbon members, said the delegate, have arrived at a situation where a number of provisions are inconsistent with the trademark system. Japan said it shared the assessment made by the US and Australia, so did South Korea. Uruguay said it disagreed with the draft texts. Changes in Draft and final text On the last morning, the negotiating committee made slight modification to the draft text of the new Lisbon Agreement. In particular, the draft agreed statement to Article 14 (Enforcement Procedures and Remedies) was deleted. The draft agreed statement referred to the ability of a contracting party to refuse to enforce rights in a registered AO or GI if “behaviour from beneficiaries or their representative” has led to the AO or GI to “lose its ability to designate a good as originating in the geographical area identified” by the AO or GI. Committee I Chair Mihàli Ficsor of Hungary said informal discussions had led to the decision to delete the draft agreed statement as delegations found that contracting parties should deal with this issue in accordance to their legal system in practice. It was also decided to propose that the new act be called: the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. In Article 7, two alternatives remained: Alternative A mentioning maintenance or renewal fees, and Alternative B which said that non-payment of individual fees (administrative fees) would have the effect that the protection in renounced. Alternative B was retained. Geographical indications benefit from international protection through the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). The relevant provisions are Article 22 (Protection of Geographical Indications), and Article 23 (Additional Protection for Geographical Indications for Wines and Spirits). TRIPS defines geographical indications (GIs) as “place names (in some countries also words associated with a place) used to identify the origin and quality, reputation or other characteristics of products (for example, “Champagne”, “Tequila” or “Roquefort”)”. Appellations of origin (AOs) are geographical indications (GIs) with stricter production requirements for registration. For years TRIPS delegates have been trying to agree on an international register for wines and spirit, to no avail. It appears that WIPO will now host an international register of all GIs. Image Credits: Catherine Saez Share this:Click to share on Twitter (Opens in new window)Click to share on LinkedIn (Opens in new window)Click to share on Facebook (Opens in new window)Click to email this to a friend (Opens in new window)Click to print (Opens in new window) Related Catherine Saez may be reached at email@example.com."At WIPO, 11 Members Sign New Act Protecting GIs, More To Follow" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.