An Interview With WIPO Director General Francis Gurry On The New Lisbon Act For GIs 25/05/2015 by Catherine Saez, Intellectual Property Watch 1 Comment 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)Members of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration on 20 May agreed on a new Act of the agreement, extending protection previously granted only to appellations of origins to geographical indications. The World Intellectual Property Organization is responsible for this agreement. After the signing ceremony at WIPO, Intellectual Property Watch sat down with WIPO Director General Francis Gurry to discuss the new Act. Intellectual Property Watch (IPW): After the Bejing Treaty on audiovisual performances in June 2012, the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled in June 2013, and now the new Geneva Act of the Lisbon Agreement, WIPO stands out as a very prolific organisation in the UN system. Why do you think that is? WIPO DG Francis Gurry FRANCIS GURRY: That is a reflection first of all on movement in the field of intellectual property and the growing importance of intellectual property. There are very active agendas on intellectual property all around the world and at every level: nationally, regionally, plurilaterally and I am very pleased that in all of that there is space for the multilateral. I am pleased that member states have been able to find agreement three times. IPW: What will the Geneva Act of the Lisbon Agreement change for geographical indications and producers, and for the public at large? GURRY: The first big change is there will now be an international register of geographical indications. Up to now it was only appellations of origin. That is a very important step. And of course this has been under discussion in the WTO [World Trade Organization] and the TRIPS [WTO Agreement on Trade-Related Aspects of Intellectual Property Rights] Council for many years. So this is the first major thing to notice about the new Act of the Lisbon Agreement. With the inclusion of GIs in the system comes a number of consequences. The treaty will be more attractive to a wider range of countries, some of whom have had difficulty with the notion of appellation of origin and who have preferred geographical indications. We will see a natural expansion of use as a consequence of the inclusion of GIs. The first big change is there will now be an international register of geographical indications – Francis Gurry Since a GI is commonly said to be easier to satisfy than an appellation of origin, it also means that for producers it may be slightly easier to get protection. So I hope GIs will become more accessible. The new Act does make it possible for those who protect geographical indications through certification marks to join. That is a big step also. We know that certain of those countries were not particularly happy with the result and there is going to be some resistance from some countries because that is what they said. But theoretically the system is now open to those who want to protect GIs through certification marks. As for consumers, we will have to wait and see on the take up that there is of this treaty and whether people will start to understand geographical indications like they have understood trademarks. IPW: Will the Geneva Act, once into force, provide a higher protection to GIs than the TRIPS agreement? GURRY: That is difficult for me to say. For non-wine, spirit products and non-agricultural products, yes. IPW: It has been said that the Geneva Act is a modernisation of the Lisbon Agreement. What does it mean for appellations of origin? GURRY: Again, we have to wait and see on that one. Certain countries are very attached to appellations of origins and there are others who prefer the geographical indications route. We will just have to wait and see how many countries join the system and when they join it, how many chose GIs as opposed to appellations of origin. That is the test of time. The jury is out. IPW: Today [21 May] two non-Lisbon members, Romania and Mali signed the Geneva Act. Do you expect more new members to join the new act? Also a number of current Lisbon members did not sign the new Act, do you have any indication that they will? GURRY: I think it is in the interest of Lisbon members to sign the new Act. It is not uncommon for countries to take some time before they sign. The Act is open for 12 months for signature so we will see what happens. I would expect that we will get most existing Lisbon members plus Romania and Mali, and some new members as well. For example, Switzerland and Germany have both been very actively involved in the process. IPW: Among the new signatories of the Geneva Act are Togo, Burkina Faso and Congo, which were early members of the Lisbon Agreement but do not have yet any registrations. It appears they have potential GI candidates but little resources to actually organise producers into association to register GIs. Is WIPO intending to provide some kind of technical assistance for those countries? GURRY: That is very important and we are already active in this area. I think that whether you are using a GI as a sui generis form of protection or a certification mark, both are more complex than just registering as an individual intellectual property title like a trademark or a design. Both do require some form of organisation of the producers and they require certain standards to be developed and adhered to, so they require logistical support beyond that which “non-collective” intellectual property rights require. Technical assistance extends to assistance in the selection of appropriate candidates which have a relationship with the geography, the second thing is the organisation of the appropriate collectivity of producers and the establishment of a charter, whether that is a certification mark regulation or GI standards. So it is actually a reasonably complex process and it is very appropriate that we should provide technical assistance. IPW: Some members have called into question the process of this diplomatic conference and its outcome. Some said it brought the legitimacy of WIPO into question. What can you say about that? GURRY: I think that is a member state issue. We, as the secretariat, have to provide the facilities for the member states to be able to come together, to have discussions and to conclude normative instruments. How they chose amongst themselves to do that really is a question that goes beyond our competence. In relation to those differences, it is very important that we, as a secretariat, remain neutral because the interests of countries are legitimately pursued by the various countries and we can’t take sides on that. We have to be in the position of observers for those differences. IPW: Some members have indicated concerns that the Lisbon system is financed by the fees generated by the PCT [Patent Cooperation Treaty] and the Madrid System [Madrid System for the International Registration of Marks]. Lisbon members have said they would implement measures to reach financial sustainability. What do you think about that? GURRY: We as the secretariat can only welcome the prospect of greater financial sustainability. The mechanisms are there in the new act to provide for greater financial sustainability. Now it is up to the member states to decide how they are going to use those various mechanisms. I would expect there will be discussions on this in the Program and Budget Committee. Fees would be decided by the Lisbon Assembly, as well as contributions. However, the Lisbon budget fits into the overall WIPO budget. In order to approve our overall budget, we need to have the approval of every relevant union. While the budgets are theoretically separate, they are discussed as an integrated whole. IPW: Will the Lisbon register become the TRIPS register that the WTO has been trying to accomplish for years? What is the process of coordination on this? GURRY: There is no process except amongst the member states. It is for the member states to decide whether the proposed TRIPS register will be pursued and if so on what terms. IPW: What is the enforcement problem for GIs and how does the new Act of the Lisbon Agreement address it? GURRY: The enforcement question is dealt with by individual member states. The new Act will provide a mechanism for getting GI and AO protection in more than one country and protection according to certain standards which are set out in the new Act. It is up to each country to decide how to “enforce” the non-compliance with those standards or the infringement of the registered GI. But that will only be for those who are members of the Lisbon system. There is a diversity of practice on how compliance is ensured for GIs. It depends if the GI has a trademark or a sui generis title but in both cases, non-compliance or infringement by illegal use of a registered AO or GI gives right to a suit for violation of the right that is protected. IPW: Thank you. 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."An Interview With WIPO Director General Francis Gurry On The New Lisbon Act For GIs" by Intellectual Property Watch is licensed under a Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International License.