Negotiators Modernize International System for Registering GIs
By Marcus Höpperger, Director, Law and Legislative Advice Division, and Matthijs Geuze, Head, Lisbon Registry, WIPO
Producers of origin-based quality products (goods produced within a given geographical area) – as well as consumers in search of such produce – stand to benefit from a recently revised international treaty which protects the indication of the geographical origin of, among others, coffee, tea, fruits, wine, cheese, pottery, glass and textiles.
Think Café de Colombia, Darjeeling tea, Florida oranges, Champagne, Gouda Holland, Jaipur blue pottery, Murano glass and Harris Tweed. Different jurisdictions protect such high-value, quality products in a variety of ways: through sui generis systems to protect appellations of origin (AOs) or geographical indications (GIs), or through the trademark system using collective marks and certification marks (see box).
The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, adopted by negotiators in Geneva on May 20, 2015, modernizes and updates the current Lisbon System by allowing for the international registration of GIs as well as AOs. The inclusion of GIs on the international register will offer a new avenue for producers to protect the distinctive designations of their goods internationally. The Geneva Act also accommodates the needs of countries that use the trademark system to protect GIs.
“The revision of a treaty is a major event in the life of the Organization that is responsible for the administration of the Agreement,” said WIPO Director General Francis Gurry at the opening of the Diplomatic Conference which ran from May 11 to 21, 2015. The revision of the Lisbon System, he said, was an opportunity to modernize it and to reflect the changes that had taken place in the world since its adoption in 1958. He referred, in particular, to the “wave of globalization which has seen markets open,” to “a heightened role for brands and identifiers,” and to “an enhanced appreciation of the value and importance of specificity and distinctiveness.” The challenge, he said, was to develop an international system that is attractive to all WIPO member states and that will enable the system to evolve and expand.
An evolving legal landscape
The current Lisbon Agreement, adopted in 1958, provides for a relatively high level of protection for AOs and makes it possible to protect them in multiple countries, regardless of the nature of the goods to which they apply. For its part, the WTO-administered Agreement on Trade-Related Aspects of Intellectual Property (TRIPS) offers two tiers of protection; one generally applicable to GIs for all products and another, higher standard for GIs applicable to wines and spirits.
The newly adopted Geneva Act revises and modernizes the 1958 Lisbon Agreement in a number of ways. The changes introduced are designed to extend coverage of the System beyond AOs (qualification for which usually involves compliance with more stringent production requirements at the national level) to all GIs, both those protected under sui generis systems and those protected via the trademark system. In so doing, the Geneva Act is expected to encourage more WIPO member states to join the Lisbon System, because while some countries apply AO protection, many others operate registration systems for GIs. The System currently has a membership of 28 countries with just 896 AOs on its international register.
About AOs, GIs and marks
Broadly speaking, a geographical indication (GI) 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 (AO) is a similar type of sign, but often with more stringent criteria for usage.
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, characteristic or reputation (for GIs) 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 is stronger in the case of an AO.
The quality or characteristics and reputation of a product protected as an AO 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 take place there.
In the case of GIs, a given quality, its reputation or other characteristic of the product must be essentially attributable to its geographical origin, for the GI to qualify as such. Moreover, the production of the raw materials and the development or processing of a GI product do not necessarily have to take place entirely in the defined geographical area.
Examples of AOs and GIs are Gouda Holland, Argan oil, Swiss watches and Tequila
Some jurisdictions protect GIs through their trademark system. In these jurisdictions, GIs are protected as either collective marks (signs used by members of an association to distinguish their goods or services from those of other entities) or certification marks (signs used to identify goods or services that comply with a set of standards and have been certified by a certifying authority).
The basic negotiating text for the Diplomatic Conference was developed between March 2009 and October 2014 by a Lisbon System working group with the goal of modernizing the System to attract a wider membership while preserving its principles and objectives.
The new Geneva Act introduces a number of new features, including:
- definitions of AOs and GIs;
- maximum flexibility with respect to how the protection standard of the Act may be implemented (i.e. through a sui generis AO or GI system or through the trademark system);
- a new definition of the scope of protection of AOs and GIs;
- an obligation for contracting parties to provide an opportunity for interested parties to request the refusal of the effect of an international registration. This new feature will make it possible for interested parties to challenge the effect of an international registration in jurisdictions where such arrangements are not currently in place;
- notification of grant of protection;
- the possibility for contracting parties to request payment of an individual fee;
- the explicitly foreseen possibility to invalidate the effect of an AO or a GI. This new provision of the Geneva Act confirms that it is possible to record the invalidation of an AO or a GI within a given jurisdiction through the Lisbon System;
- safeguards with respect to prior trademark rights, personal names used in business, and rights based on a plant variety or animal breed denomination;
- a provision that opens accession to the Geneva Act by certain international intergovernmental organizations with competence in the area of GI protection including, for example, the European Union (EU) and the African Intellectual Property Organization (OAPI).
The Final Act of the Diplomatic Conference, an official record that the event took place, was signed by 54 delegations. Eleven of those delegations also signed the Geneva Act, namely, Bosnia and Herzegovina, Burkina Faso, Congo, France, Gabon, Hungary, Nicaragua, Peru, and Togo and two non-Lisbon members, Mali and Romania. Italy signed the Geneva Act the following day, bringing the number of signatories to 12.
The Geneva Act will remain open for signature for 12 months. It will enter into force upon ratification or accession by five contracting parties.
The WIPO Magazine is intended to help broaden public understanding of intellectual property and of WIPO’s work, and is not an official document of WIPO. The designations employed and the presentation of material throughout this publication do not imply the expression of any opinion whatsoever on the part of WIPO concerning the legal status of any country, territory or area or of its authorities, or concerning the delimitation of its frontiers or boundaries. This publication is not intended to reflect the views of the Member States or the WIPO Secretariat. The mention of specific companies or products of manufacturers does not imply that they are endorsed or recommended by WIPO in preference to others of a similar nature that are not mentioned.