Geneva Geographical Indications Agreement Takes Effect, INTA Offers Implementation Guidance

The Geneva Act boosting protection of geographical indications took effect this year and provides some level of safeguards for trademark owners and users of generic terms. But varying approaches to implementation of the Act in the acceding jurisdictions could undermine these safeguards and put their rights at risk. INTA’s Geographical Indications Committee has responded by providing recommendations for governments on the implementation of the Act to countries acceding or considering acceding.

The Geneva Act of the Lisbon Agreement on Appellations of Origin (AOs) and Geographical Indications (GIs) of 2015 (‘the Geneva Act’), took effect on February 26, 2020, with the accession of the European Union. This Act will make it critical that parties to this agreement ensure they have the necessary due process measures in place to appropriately consider these AOs and GIs in a manner that also respects the rights of trademark owners and generic term users.

Fair and equitable application of intellectual property (IP) protections is critical to maintaining the necessary balance in IP systems to respect both the rights of new applicants—in this case GI and AO holders—as well as the rights of trademark owners and users of generic terms. An equitable process will set a global precedent that strengthens the integrity of IP systems. INTA’s recommendations provide useful guidance as to how the Geneva Act may be implemented to achieve these goals.

The Geneva Act is the latest revision of the Lisbon Agreement for the Protection of Appellations of Origin and was adopted by the members of the Lisbon Agreement in May 2015. By its terms, the Geneva Act entered into force three months after the fifth jurisdiction—the European Union—deposited its document of accession at the World Intellectual Property Organization (WIPO). Along with the EU, Albania, Cambodia, North Korea, and Samoa have also acceded.

Also coming into force on February 26, 2020, were the Common Regulations under the Lisbon Agreement and the Geneva Act (‘Common Regulations’). In addition to providing for protection for prior trademarks and generic terms, the Geneva Act has also broadened the terms that are eligible for higher protection to include GIs in addition to appellations of origin.

The Act and the Common Regulations provide some basic parameters and guidelines as to implementation of the Act in the acceding countries, but many of the details regarding implementation are left to the jurisdictions themselves. History has shown that countries that have joined the Lisbon Agreement (prior to the Geneva Act) have not always had the appropriate mechanisms in place to implement the Agreement in an even-handed manner, leaving both owners of prior trademarks and users of generic terms vulnerable to negative impacts.

With that in mind, INTA’s Geographical Indications Committee has drafted a paper recommending the fair and effective implementation of the Act. The paper, Recommendations regarding the implementation of the Geneva Act of the Lisbon Agreement, has been sent to WIPO and will be sent to specific governments.

In crafting its guidance, the Committee considered INTA’s Board Resolution regarding the Protection of GIs, adopted by the Board of Directors in November 2019. The resolution includes four pillars:

• Protection of prior trademarks;
• Transparency and due process;
• Standing to third parties to object to GI protections; and
• Protection of generic terms from being monopolized by GIs.

INTA’s Geneva Act implementation recommendation paper of the INTA GI Committee tackles some of the nuts and bolts considerations associated with the implementation of any IP regime:

• Institute a robust review and examination process once GIs are notified. This is essential since protection is automatically granted one year after notification of the GI to the acceding country if no action is taken by the acceding country.
• Publish the GIs for opposition well in advance of the GIs being protected and provide third parties with the fair and effective procedures for objecting to those applications.
• Provide clear guidance as to the valid grounds for refusal, opposition, and cancellation as well as specifying clear and objective criteria as to what constitutes a generic term in those jurisdictions.
• Provide effective protections for existing trademarks and protections providing for the continued use of generic terms.

In order to raise awareness on the issue, and to promote its recommendations, INTA will host a webcast on September 16, 11:00 am (EDT), titled ‘Lisbon System—the New International Registration for GIs.’

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

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