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June 15, 2015 Vol. 70 No. 11 Back to Bulletin Main Page

New Act of the Lisbon Agreement Encompasses All Geographical Indications, Allows Accession by Regional Organizations

On May 20, 2015, a Diplomatic Conference, convened at the seat of WIPO in Geneva by the Assembly of the Lisbon Union, adopted a new Act of the Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration. The new Act, to be known as the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, though technically a revision of the 1967 (Stockholm) Act of the Agreement, expands the scope of the treaty to all geographical indications (i.e., beyond the subset that appellations of origin constitute), opens membership to intergovernmental organizations through which regional titles of protection for geographical indications can be obtained (e.g., the EU and OAPI) and contains a number of provisions that purport to widen the membership of the Lisbon Agreement and make it more attractive to users.

INTA was represented at the Diplomatic Conference by Bruno Machado, INTA’s Representative in Geneva, and by Constanze Schulte, Partner, Hogan Lovells International LLP, member of the Geographical Indications Subcommittee of the Related Rights Committee of INTA (see the INTA Blog).

A Controversial Process
The adoption of the new Act was the outcome of a process of review initiated by the Assembly of the Lisbon Union in September 2008, when it decided to establish a Working Group for exploring possible improvements to the procedures under the Lisbon Agreement. The terms of reference of the Working Group were subsequently expanded to include an overall review of the Lisbon System with a view to making it more attractive to users and potential new members, without compromising its basic principles and objectives. The Working Group was composed of members of the Lisbon Union. Other WIPO Member States and interested organizations were invited as observers. Similarly, at the Diplomatic Conference, only the 28 countries currently party to the Lisbon Agreement had the right to vote. This was strongly criticized and objected to by a number of WIPO members not party to the Lisbon Agreement who underlined that, whereas the Geneva Act of the Lisbon Agreement would have an impact on enterprises of all WIPO members, the overwhelming majority of the latter were not put in a position properly to defend their interests on a level playing field. Although a genuine effort was made to conduct business at the Conference in as flexible and inclusive a manner as possible and to accommodate suggestions by non-members as long as they did not compromise the basic principles of the Lisbon Agreement (crafted for sui generis appellations of origin protection systems), there is no doubt that the final outcome would not have been the same had all members of WIPO been given equal rights at the Conference.

A Mixed Result
INTA’s involvement in the process of revising the Lisbon Agreement was guided by the hope that it could lead to an inclusive and balanced registration system, open to all protection systems, including trademark-based systems, and providing for appropriate safeguards for prior rights.

Progress has been accomplished in that direction, notably with respect to the following:
  • The introduction in the Agreement of a provision (Article 13) safeguarding other rights, in particular prior trademark rights, subject, however, to any limited exception as may be provided by the legislation of a Contracting Party (presumably within the limits of Article 17 TRIPS) and leading to coexistence;
  • The introduction of an obligation to provide an opportunity for interested parties to request the refusal of an international registration (Article 15);
  • The introduction in the Agreement of an article (Article 19) on the invalidation of the international registration (which does not limit the grounds for invalidation);
  • The introduction in the Agreement (Article 5) of language allowing holders of certification marks to apply for an international registration under the new Act.
On the other hand, statements made, upon adoption of the new Act, by a number of delegations of countries with trademark-based protection systems, made it very clear that the objective of an inclusive global system was not achieved and that there remain in the new Act a number of provisions that would make it very difficult, if not impossible, for countries relying on trademarks in order to protect geographical indications to join the Geneva Act.

This is particularly the case with respect to (1) Article 1 on the content of protection; and (2) Article 12, which prevents a Contracting Party from considering a registered appellation of origin or geographical indication as having become generic as long as it is protected in the Contracting Party of Origin; or of the validity of the registered appellation of origin or geographical indication for an indefinite period of time without the need for renewal, or a requirement of use, or in spite of conduct leading to acquiescence.

The Geneva Act of the Lisbon Agreement will be the subject of a thorough analysis by the Geographical Indications Subcommittee of INTA’s Related Rights Committee, which will make recommendations to the Board of Directors of the Association as appropriate.

The Geneva Act was signed by 11 countries, including two non-members of the Lisbon Union (Mali and Romania), subject to ratification. It will remain open for signature until May 20, 2016. Five instruments of ratification or accession are required to cause its entry into force. As long as all parties to the 1958 or 1967 Act of the Lisbon Agreement have not become party to the Geneva Act, the latest act to which they are mutually party will govern the relations between parties to the Agreement.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

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