WIPO GI System To Become More Expensive For Users; US Questions Administration

Last year, amid protests from some World Intellectual Property Organization members, a new treaty was adopted to protect geographical indications, broadening an existing treaty. One of the objections of some was that the existing treaty was not financially sustainable, and was piggybacking on other WIPO income-generating treaties. Last week, members of the treaty went over possible solutions to bring money into the system. Italy and France, the biggest beneficiaries, committed actual funds.

Meanwhile, the issue of geographical indications (GIs) is spicing up negotiations in the United States-European Union trade agreement. Geographical indications are names used on products that have a specific geographic origin and have qualities or a reputation that are due to that origin.

The contention that arose last year at WIPO is due to a divergent way of protecting such products. Some countries, such as France, Italy and Romania, protect their GIs through a sui generis system, while others, such as the United States and Australia, have opted for a trademark-based protection.

Some names of European GIs, such as feta cheese (Greek) or parmesan cheese (Italian) have become generic in the US for example, and although the US might never be part of the Lisbon system, the implementation of the Lisbon system in its commercial partners could impact the US dairy business, as noted in an industry release.

The first session of the Working Group for the Preparation of Common Regulations under the Lisbon Agreement and the Geneva Act of the Lisbon Agreement took place from 7-9 June.

The working group had a dual purpose, one was to consider a set of draft regulations [pdf] that would be common to the Lisbon Agreement [pdf] for the Protection of Appellations of Origin and their International Registration, and the Geneva Act [pdf].

The Geneva Act of the Lisbon Agreement was adopted in 2015. Currently, 15 countries have signed it and none has ratified it. The Geneva Act is set to enter into force three months after five ratifications.

The second purpose of the working group was to find possible ways to make the Lisbon system financially self-sustainable. A certain number of options had already been suggested during the September 2015 WIPO Program and Budget Committee, such as increased fees, and annual contributions.

WIPO Director General Francis Gurry opening the session remarked that the process of establishing common regulations between a treaty and its new act or acts is common practice at WIPO and had been done for example, with the Hague System for the International Registration of Industrial Designs, and the Madrid System for the International Registration of Marks.

On the quest for funds to support the Lisbon system, Gurry also noted that “in the context of the overall [WIPO] budget, the amount we are speaking about is small.” The projected deficit of the Lisbon treaty for the 2016-2017 biennium has been estimated at about Swiss francs 1.5 million (about US$1.5 million).

Quest for Sustainability, Everyone Agrees

The financing needs of the Lisbon system are first to cover the projected deficit of the current biennium, and then to devise a strategy to ensure the long-term financial self-sustainability.

If all Lisbon members who took the floor agreed with the fact that the treaty needs to be self-sustainable, and most concurred with the idea of voluntary financial contribution to address the current deficit, only two countries actually provided numbers. Italy said it could provide some CHF312,000 Swiss francs (about US$322,000) and France suggested it could provide some 500,000 Swiss francs (about US$516,000).

The Lisbon system currently covers appellations of origin, which are geographical indications with stricter rules, and contains a little over 1,000 registrations. France, with over 500 registrations, and Italy with over 100 registrations are the heavyweights of the system.

The calculation of the contribution can be done in two ways, the first one is to calculate it on the basis of the International Union for the Protection of Industrial Property (Paris Union), in which each country of the Union belongs to a class and pays fees accordingly. The second calculation would be based on the number of registrations in each member state. Lisbon members were divided last week on which system should be used and whether contributions should be voluntary or compulsory.

On the long-term solution, Lisbon members are still considering options, including the gradual raising of fees.

US Questions WIPO Administration of Geneva Act

At the opening of the session, the US, an observer in the working group, said it was premature to start working on common regulations for both instruments because the Geneva Act is not yet enforced and, according to the US, WIPO has yet to agree to administer the Geneva Act.

Under the WIPO Convention, the General Assembly, the Paris Union Assembly, and the Berne Union Assembly, may agree to approve measures proposed by the director general to administer a new agreement, the US delegate said.

However, no such measures have been proposed, she said. “Accordingly, it goes without saying that no such measures have been adopted,” she added.

Although there are divergent views on whether measures are necessary, she said, members of the Lisbon Union say that WIPO is required to perform the administrative task of the special unions established in relation to the Paris Union, she added. Members of the Lisbon Union can ask the director general to propose measures and let the entire WIPO membership decide whether the Geneva Act should be administered by WIPO, she said.

Lisbon Members Ask WIPO for Promotion, Others Demand Balance

As noted in the summary [pdf] by Chair Nikoloz Gogilidze of Georgia, several Lisbon members underlined the promotion of the Lisbon systems as a way to attract new members which would help share the financial burden of the system, and also prompt existing members to file new applications.

Some members called for WIPO to help with the promotion of the system. However, the US insisted that WIPO should take a balanced approach in such promotion. If the Lisbon system is to be raised as an option for those interested in GI protection, the US delegate said, it must be part of a comprehensive balanced discussion, the US delegate said. This was supported by Australia.

Both countries have remarked in the past that the Lisbon system is incompatible with their own national protection system based on trademarks and they would be unlikely to join.

Hungary remarked that the balanced approach in WIPO’s promotion activities should then applied to other global IP systems. In particular, questions can be raised about how balanced is the promotion provided by WIPO when it comes to the Patent Cooperation Treaty, the delegate said. Is there some promotion of the Intergovernmental Committee on Intellectual Property and Genetic Resources, Traditional Knowledge and Folklore (IGC), at the same time, he asked. When WIPO promotes the Hague system, are alternative solutions such as copyright-based solutions also promoted, he asked again.

The WIPO secretariat is requested to prepare a revised version of the draft Common Regulations for the next session of the working group. The working group also requested the secretariat to organise meeting(s) for Lisbon members to prepare proposals to address the long term financial sustainability of the system in time for consideration at the next session of the Lisbon Union Assembly in the fall.

 

Image Credits: Flickr – Storm Crypt