EU Agrees To Accede To Controversial WIPO Agreement Raising GI Protection

European Union member states today agreed to accede to an agreement negotiated under the World Intellectual Property Organization that raises protections for geographical indications, products whose names derive from a particular regions with certain characteristics. Joining the so-called Geneva Act establishes a GI register for agricultural and non-agricultural products and appears to have the effect of requiring EU members to protect registered GIs of other members.

It was unclear at press time what impact this will have for non-EU nations selling products in the EU. Intellectual Property Watch will seek to provide a fuller analysis of this action shortly.

EU ambassadors meeting today approved accession to the Geneva Act of the Lisbon Agreement for the protection of appellations of origin and their international registration. The Geneva Act was negotiated by a small number of countries at WIPO in 2015, with opposition from some other WIPO members. It is unclear if the EU will count as one member, 28 members, or another number of members. Several EU states are already signatories to the Geneva Act. [Update: A Council press person told IP-Watch, “When the EU accedes it will be considered as a separate contracting party. That will also be the case with any EU member state that decides to ratify or accede.”]

The move into non-agricultural GIs is seen as a significant shift, and received special treatment in the agreement.

The 32-page agreed text of the regulation is available here [pdf].

Today’s European Council press release is reprinted below:

EU to accede to international agreement on appellations of origin and geographical indications

The EU is acceding to the Geneva Act of the Lisbon Agreement for the protection of appellations of origin and their international registration (‘the Geneva Act”). Member states’ ambassadors meeting in Coreper today approved the agreement reached by the Romanian presidency of the Council with the European Parliament on a draft regulation enabling the EU to exercise its rights and fulfil its obligations as a contracting party after this accession.

The Geneva Act of the Lisbon Agreement is a treaty administered by the World Intellectual Property Organization (WIPO). It expands the scope of the Lisbon Agreement to cover not only appellations of origin but also geographical indications and allows international organisations (such as the EU) to become party to the Lisbon Union established under the Lisbon Agreement.

Each contracting party is obliged to protect on its territory the appellations of origin and geographical indications of products originating in other contracting parties.

The EU has exclusive competence for the areas covered by the Geneva Act. However, member states are authorised to accede to the Geneva Act alongside the EU and in the interest of the EU in order to ensure the EU’s voting rights.

Next steps

After its endorsement by the European Parliament’s Legal Affairs committee, the regulation will be adopted by the European Parliament and by the Council. Adoption by the Council will take place simultaneously with the adoption of the Council decision authorising the EU’s accession to the Geneva Act once the European Parliament has given its consent.

Background

Seven EU member states are contracting parties to the Lisbon Agreement: Bulgaria (since 1975), Czech Republic (since 1993), Slovakia (since 1993), France (since 1966), Hungary (since 1967), Italy (since 1968) and Portugal (since 1966). Three EU member states have signed but not ratified the Agreement (Greece, Romania and Spain). The EU itself is not a contracting party as the Lisbon Agreement only provides for membership of States, not international organisations.

Read the agreed text of the draft regulation

Octavio Espinosa says

22/03/2019 at 4:33 am

Dear William,

Thanks for the report on the European Union (EU) draft Regulation on action to be taken by the EU following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

A few points in that report warrant comments, if only to provide a different slant on some of the issues. I grant that my views may be biased by my belief that appellations (or designations) of origin and geographical indications (hereinafter generally referred to as ‘GIs’) can be good for trade and the development of local communities and producers around the world.

1. The Geneva Act of the Lisbon Agreement did not actually “raise protection” for GIs. The Lisbon Agreement already provided for the highest level of protection for appellations of origin available internationally. This did not change, as such.

2. As regards the scope of subject matter, the original Lisbon Agreement’s broad definition of appellation of origin (AO) de facto covered both ‘designations of origin (DO) and ‘geographical indications’ as they were later defined and distinguished under European law. The Geneva Act merely inserted the definition of GI — taken wholesale from the TRIPS Agreement — to supplement the classic definition of AO already in the Lisbon Agreement since 1958. This apparent broadening of scope was clearly intended to appeal to most potential new members of the Agreement.

3. You note that the Geneva Act was negotiated by a “small number” of countries at WIPO in 2015, with opposition from some other WIPO members. The Geneva Act was in fact a revision of the Lisbon Agreement and involved all its member States. As you may recall, the Paris Convention for the Protection of Industrial Property establishes a “Union” of member States. It the members of the Paris Union “to make separately between themselves special agreements for the protection of industrial property”. The Lisbon Agreement is one such ‘special agreement’, with its own special membership, the “Lisbon Union”. These special agreements may only be revised by their members. Non-members cannot vote to revise a treaty to which they do not belong, and cannot legally “oppose” the revision. This simple legal principle was challenged at the time of adoption of the Geneva Act, causing unfair and unnecessary controversy and acrimony.

4. The Lisbon agreement (including the Geneva Act) does not limit the types of products for which an AO or GI may be used or registered. This is one of the strong points of the Lisbon system. It allows for the registration of GIs for goods as varied as mineral water, animal breeds, handicraft products, crystal ware, textiles, jewelry and porcelain. So, in this respect there was no major ‘move’. However, the EU will have to sort out matters internally because only seven EU countries are Lisbon Union parties and as of yet there is no EU-wide regulation to protect GIs for goods other than agricultural, foodstuffs and beverages.

5. Unfortunately, it seems from the abovementioned draft Regulation that the EU will have to join the Lisbon system at the lowest common denominator level, which is quite below what countries like France and Italy are used to. It is also noteworthy that in the said draft, the rules of conflict between GIs and trademarks take away much of the higher standing that GIs need, as they are typically bound by their traditional use and their geographical location (bounds that are non-existent for trademarks). Fortunately, the equal footing only seems to benefit trademarks registered or used “in good faith”. By this standard one could speculate: could, for instance, a beer company that registered, say, the mark “Munich” for beers claim that such registration was made in good faith? (on the assumption that the city of Munich is well known by persons operating in the beer industry as a traditional place of provenance of beer products).

Comments

Octavio Espinosa says

22/03/2019 at 4:33 am

Dear William,

Thanks for the report on the European Union (EU) draft Regulation on action to be taken by the EU following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

A few points in that report warrant comments, if only to provide a different slant on some of the issues. I grant that my views may be biased by my belief that appellations (or designations) of origin and geographical indications (hereinafter generally referred to as ‘GIs’) can be good for trade and the development of local communities and producers around the world.

1. The Geneva Act of the Lisbon Agreement did not actually “raise protection” for GIs. The Lisbon Agreement already provided for the highest level of protection for appellations of origin available internationally. This did not change, as such.

2. As regards the scope of subject matter, the original Lisbon Agreement’s broad definition of appellation of origin (AO) de facto covered both ‘designations of origin (DO) and ‘geographical indications’ as they were later defined and distinguished under European law. The Geneva Act merely inserted the definition of GI — taken wholesale from the TRIPS Agreement — to supplement the classic definition of AO already in the Lisbon Agreement since 1958. This apparent broadening of scope was clearly intended to appeal to most potential new members of the Agreement.

3. You note that the Geneva Act was negotiated by a “small number” of countries at WIPO in 2015, with opposition from some other WIPO members. The Geneva Act was in fact a revision of the Lisbon Agreement and involved all its member States. As you may recall, the Paris Convention for the Protection of Industrial Property establishes a “Union” of member States. It the members of the Paris Union “to make separately between themselves special agreements for the protection of industrial property”. The Lisbon Agreement is one such ‘special agreement’, with its own special membership, the “Lisbon Union”. These special agreements may only be revised by their members. Non-members cannot vote to revise a treaty to which they do not belong, and cannot legally “oppose” the revision. This simple legal principle was challenged at the time of adoption of the Geneva Act, causing unfair and unnecessary controversy and acrimony.

4. The Lisbon agreement (including the Geneva Act) does not limit the types of products for which an AO or GI may be used or registered. This is one of the strong points of the Lisbon system. It allows for the registration of GIs for goods as varied as mineral water, animal breeds, handicraft products, crystal ware, textiles, jewelry and porcelain. So, in this respect there was no major ‘move’. However, the EU will have to sort out matters internally because only seven EU countries are Lisbon Union parties and as of yet there is no EU-wide regulation to protect GIs for goods other than agricultural, foodstuffs and beverages.

5. Unfortunately, it seems from the abovementioned draft Regulation that the EU will have to join the Lisbon system at the lowest common denominator level, which is quite below what countries like France and Italy are used to. It is also noteworthy that in the said draft, the rules of conflict between GIs and trademarks take away much of the higher standing that GIs need, as they are typically bound by their traditional use and their geographical location (bounds that are non-existent for trademarks). Fortunately, the equal footing only seems to benefit trademarks registered or used “in good faith”. By this standard one could speculate: could, for instance, a beer company that registered, say, the mark “Munich” for beers claim that such registration was made in good faith? (on the assumption that the city of Munich is well known by persons operating in the beer industry as a traditional place of provenance of beer products).

EU Agrees To Accede To Controversial WIPO Agreement Raising GI Protection

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