Outcome of the Seventh Session of the Lisbon Working Group (April 29 – May 3, 2013)
Negotiators have made significant progress on a new international agreement that would ease countries' protection of signs associated with a particular geographical area and a high-level negotiating conference is now possible within two years.
Following its seventh session held April 29-May 3, 2013 in Geneva, the Working Group on the Development of the Lisbon System recommended that the Lisbon Union Assembly approve at its 2013 session the convening of a diplomatic conference for the adoption of a Revised Lisbon Agreement on Appellations of Origin and Geographical Indications in 2015.
Ahead of a diplomatic conference, the exact dates and venue of which would be decided by a preparatory committee meeting, two further Working Group sessions are scheduled. One is slated for December 2013 and another for the first half of 2014, which might be followed by an additional session of the Working Group in the second half of 2014 if necessary.
Meanwhile, the Working Group requested the Secretariat to produce a revised version of the Draft Revised Lisbon Agreement and to continue to work on the basis of a single text covering both appellations of origin and geographical indications, while maintaining two separate definitions. The definitions and the level of protection are still under discussion, but the protection for both appellations of origin and geographical indications would be on equal footing and enable those who have the right to use the appellation of origin or geographical indication to prevent its use by someone whose product does not conform to the applicable standards.
For example, in the jurisdictions in which Darjeeling is protected, producers of Darjeeling tea can exclude use of the term "Darjeeling" for tea not grown in the tea gardens of Darjeeling or not produced according to the standards set out in the code of practice for the geographical indication Darjeeling. However, protection of geographical indications and appellations of origin does not enable their beneficiaries to prevent someone from making a product using the same techniques as those set out in the standards set for usage of the geographical indication or appellation of origin.
Broadly speaking, a geographical indication is a sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. An appellation of origin is similar, but often with more stringent criteria for usage. Examples of geographical indications are Parma Ham, Champagne, Scotch Whisky, Gouda Holland, Darjeeling, Café de Colombia, Argan Oil and Tequila. Some of these are appellations of origin in their country of origin. [ 1]
Appellations of origin and geographical indications both require a qualitative link between the product to which they refer and its place of origin. Both inform consumers about a product's geographical origin and a quality or characteristic of the product linked to its place of origin. The basic difference between the two terms is that the link with the place of origin must be stronger in the case of an appellation of origin.
The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin. This generally means that the raw materials should be sourced in the place of origin and that the processing of the product should also happen there. In the case of geographical indications, a single criterion attributable to geographical origin is sufficient, be it a quality or other characteristic of the product, or only its reputation. Moreover, the production of the raw materials and the development or processing of a geographical indication product do not necessarily take place entirely in the defined geographical area.
The Working Group also agreed on the wording of an article which addresses the relationship between the protection of appellations of origin/geographical indications and prior rights, which is to be included in that revised version of the Draft Revised Lisbon Agreement.
For example, in case an appellation of origin or geographical indication registered under the Revised Lisbon Agreement would conflict with a prior trademark, the provision would result in a situation of co-existence, according to the current draft, except in a member that decides that in its territory the prior trademark should prevail. Under the current system, a member could decide that use under a prior trademark must be terminated.
Other proposed changes to the current Lisbon System include permission for the accession by international organizations, such as the European Union or the African Organization for Intellectual Property (OAPI), and for the option of direct filing to WIPO by beneficiaries, rather than solely through national authorities as is the current practice.
The eighth session of the Working Group, which will take place in December 2013, will host a half-day conference on dispute settlement within the Lisbon system as a side event.
The original Lisbon Agreement, concluded in 1958, responded to the need for an international system facilitating the foreign protection of appellations of origin via registration with WIPO through a single procedure aimed at reducing formalities and costs.
In September 2008, the Assembly of the Lisbon Union established the Working Group on the Development of the Lisbon System. The Working Group is responsible for exploring possible improvements to the Lisbon System with a view to increasing its membership by making the system more attractive for users and prospective new members.
Since 2009, the Working Group has engaged in a full review of the Lisbon International Registration System involving its possible extension to geographical indications, in addition to appellations of origin.
A Revised Lisbon Agreement would help achieve the objective mentioned above.
It would also help to protect national economic interests, as appellations of origin or geographical indications represent a substantial share of exports for many countries. Therefore, it is important that these intellectual property rights should be protected as widely and effectively as possible.