wipo lisbon agreement_geneva act

1. Geographical indications
as an Intellectual Property Right
(legal protection):
The International Context
Development of GIs
in the African Union
Validation Workshop
Nairobi, Kenya
November 22 - 25, 2016
Alexandra Grazioli
Director, Lisbon Registry

2. Outline
What are Geographical Indications?
What are the new developments in
international negotiations?
What’s next?

3. WIPO’s Role in the Field of Geographical
Indications and Appellations of Origin
Administration of several international agreements
relevant for the international registration
and/ or protection of GIs and AOs
(Paris Convention, Madrid Agreement, Lisbon System)
Forum for discussions of possible developments
of the international protections of GIs and AOs
(Standing Committee, Lisbon Working Group)
Provision of technical assistance
(capacity building, legislative
advise, etc.)

4. What are Geographical Indications?

5. What is it?

6. MONTECRISTI Hat
(better known as "Panamá")
Specific place of origin
Specific characteristic (natural and human factors)

7. What are geographical indications (GIs)?
MONTECRISTI
An indication which identifies a good as originating
in a specific geographical area and whose quality,
reputation or characteristics are essentially attributable
to that geographical origin

8. Appellations of Origin (AOs)
and Geographical Indications (GIs)
Purpose: Distinctive sign indicating a connection
between quality, characteristics, reputation
of goods and their geographical origin
Informs consumers of the typicality of the products
derived from this connection
Represents the collective goodwill derived from this
typicality (reputation)
Value-added

9. IS, GIs, AOs: what is the difference ?
Appellations
of Origin
Geographical
Indications
Indications of source
Quality
& Origin
Quality/
reputation
& Origin
Origin
Lisbon
GE Act
TRIPS
GE Act
Madrid
(IS)

10. What are the new developments in
international negotiations?

11. Protection of GIs at the International Level?
Bilateral or Pluri-lateral Agreements
Under such agreements two or more States
or trading partners agree to protect each
other’s GIs (standard of protection + often GI-list)
Multilateral Agreements:
• Paris Convention / Madrid Agreement
Protection of AOs and ISs
• TRIPS Agreement (WTO)
Protection of GIs
• Madrid Protocol/Agreement (WIPO)
Registration of TM
• Lisbon Agreement (WIPO)
Protection and registration of AOs
and GIs under the Geneva Act

12. The Agreement on Trade-related Aspects
of Intellectual Property Rights of 1994
(TRIPS Agreement)

13. Geographical Indication (Art. 22.1)
Indications which identify a good as
originating in the territory
of a [WTO] Member, or a region or
locality in that territory, where
a given quality, reputation or other
characteristic of the good
is essentially attributable
to its geographical origin

14. The TRIPS compromise : two levels
of protection for GIs (Art. 22 and 23)
Basic level of protection for all products (Art. 22)
- against use of a GI that misleads the public as to the
geographical origin of the good; or
- against use of a GI that constitutes an act of
unfair competition (Art. 10bis Paris Convention)
Additional protection for GIs for wines and spirits
(Art. 23)
- against use on wines and spirits not coming from that
origin
- even where the true origin is indicated, even when used
in translation, and even where accompanied by
expressions like “kind”, “type” or “style”

15. 22 TRIPS
all goods
23 TRIPS
wines & spirits

16. The TRIPS compromise : safeguards (Art. 24)
Futures negotiations (Art.24.1)
Grand-fathering clause; use before date of signature of
WTO Agreement (15.04.94) for 10 years or use in good
faith before that date (Art.24.4)
Exception for prior trademarks before date of
application of TRIPS Agreement or before the GI is
protected in country of origin (Art.24.5)
Generics; grape variety (Art.24.6)
Exceptions for the use of family name in the course of
trade (Art.24.8)
Protection in the country of origin (Art.24.9)

17. The Lisbon Agreement
for the Protection of Appellations of Origin
and their International Registration of 1958
and the 1967 Act

18. States Party to the Lisbon Agreement
(28 Contracting Parties)

19. Lisbon Union: 28 Member States
Africa (6)
Algeria
Burkina Faso
Congo
Gabon
Togo
Tunisia
Asia (3)
Islamic Rep. of Iran
Israel
DPR of Korea
America (6)
Costa Rica
Cuba
Haiti
Mexico
Nicaragua
Peru
Europe (13)
Bosnia and Herzegovina
Bulgaria
Czech Rep.
France
Georgia
Hungary
Italy
Moldova
Montenegro
Portugal
Serbia
Slovakia
The FYR of Macedonia

20. Algeria 7
Bulgaria 51
Costa Rica 1
Cuba 20
FYR of Macedonia 5
France 509
Georgia 28
Hungary 28
Iran (Islamic Rep.) 32
Israel 1
Italy 142
Mexico 14
Montenegro 2
Peru 8
Portugal 7
Rep. of Moldova 1
DPR of Korea 6
Czech Rep. 76
Serbia 3
Slovakia 7
Tunisia 7
(End of October 2016)
1060 registrations – 955 in force

21. Registered Appellations of Origin
The Bulletin “Appellations of origin” is
the official publication of the Lisbon
System. It is issued by WIPO for the
publication of new registrations and
other recordings in the International
Register as well as information
concerning changes in the legal
framework of the Lisbon System. In
addition, the Bulletin contains statistical
information concerning registered
appellations of origin.
The LISBON EXPRESS database The AO Bulletin

22. Examples of Appellations of Origins (AO)
in the Lisbon Registry
CHULUCANAS (869 / Peru)
HEREND (737 / Hungary)
TEQUILA (669 / Mexico)
SAROUGH HANDMADE
CARPET (956 / Iran)
REBLOCHON
(458 / France)
VINHO VERDE
(564 / Portugal)
PROSCIUTTO DI PARMA
(843 / Italy)

23. The Lisbon Agreement in a Nutshell…
Established to facilitate the international
protection of appellations of origin (AOs)
through a single registration procedure
(“simple and accessible”)
Administered by WIPO, which keeps the
International Register of Appellations of
Origin

24. The Lisbon Agreement in a Nutshell…
Indefinite protection in all Contracting Parties
- exception: refusal, invalidation, enunciation of protection, and
- as long as the AO is protected in the Contracting Party of Origin
High level protection of the registered AOs
in the other Lisbon countries
(against any usurpation or imitation)
Protection of registered AOs against
becoming generic in the other Lisbon countries
Provides standing for taking legal action

25. Registration in the International Registry and Publication (WIPO)
&
Notification of the Registration to all Contracting Parties (WIPO)
Application for an International Registration
(by Competent Authority of the Country of Origin)
Refusal of Protection
(total/partial)
(one year)
Notification of Grant of
Protection (optional)
Withdrawal of Refusal
(total/partial)
or
Notification of
Protection
Transitional Period
(2 years )
Invalidation
or
Renunciation

27. Origin of the Revision of the Lisbon System
Objective: Improve the Lisbon System to make it
more attractive for users and prospective new Members,
while preserving the principles and objectives of the
Lisbon Agreement
 Allow the accession of intergovernmental organizations
that administer regional systems for the registration
of GIs
 Enhanced recognition of the different means of protection
of AOs and GIs at national and regional level

28. Variety of means to protect
geographical indications
Sui generis legislation
Collective or certification marks
Administrative systems (labelling, etc.)
Legislation on unfair competition

29. But what about IGOs ?
and Protection of GIs?
Penja Pepper
(Cameroon)
Ziama-Macenta Coffee
(Rep. of Guinea)
Oku White Honey
(Cameroon)

30. Geneva Act of the Lisbon Agreement
on Appellations of Origin
and Geographical Indications
Adopted on May 20, 2015
15 signatories
(Bosnia and Herzegovina, Burkina Faso, Congo, Costa Rica,
France, Gabon, Hungary, Italy, Mali, Nicaragua, Peru,
Portugal, Republic of Moldova, Rumania, Togo)
Will enter into force with five ratifications or accessions

31. Subject-Matter (Article 2(1))
AO
(= Art.2.1 LIS)
Protected denomination
Referring to a geographical
area or known as doing so
Designating a good as
originating therein
Quality or characteristics
Reputation (denomination)
Due to the geographical
environment (natural factors
and human factors)
GI
(= Art. 22.1 TRIPS)
Protected indication
Referring to a geographical
area or known as doing so
Identifying a good as
originating therein
Quality, reputation or other
characteristics
Attributable to its
geographical origin
Geographical area of origin: place, locality, region or entire territory
+ trans-border geographical area (Art. 2(2))

32. Means of Protection in Contracting Parties
(Articles 9 and 10)
Flexibility as to the type of legislation under
which a Contracting Party protects registered
AOs/GIs (sui generis, TM/CTM, other)
Contracting Parties may provide protection in
respect of AOs and GIs on the basis of the GI
definition only
They should then protect AOs registered
under the Geneva Act as GIs, if these meet
the GI definition

33. Application Procedure (Article 5)
Applications are filed by the Competent Authority of the
Contracting Party of Origin in the name of:
- the beneficiaries
(those having the right to use the AO/GI)
or
- a natural person or legal entity having legal
standing to assert rights of the beneficiaries or
other rights in the AO/GI
Direct filings by these “right holders”
(declaration from the Contracting Party that
its legislation so permits)

34. Application (Article 5)
Mandatory requirements
- Contracting Party of origin, beneficiaries,
AO/GI, goods, geographical area of origin,
title of protection, etc.
- Protection not claimed for certain elements
and
Declaration-based requirements (if applicable)
 Particulars concerning the quality, reputation
or characteristic(s)
 Signature and/or intention to use
 Payment of an individual fee

35. Registration in the International Registry and Publication (WIPO)
&
Notification of the Registration to all Contracting Parties (WIPO)
Application for an International Registration
(by Competent Authority of the Country of Origin + direct filing )
Refusal of Protection
(total/partial)
(one year)
Notification of Grant of
Protection (optional)
Withdrawal of Refusal
(total/partial)
or
Notification of
Protection
Transitional Period
(2 years  15 years )
Invalidation
or
Renunciation

36. Scope of Protection (Article 11(1)(a)(i)&(2))
Legal means to prevent use in respect
of goods of the same kind
- not originating in the geographical area of
origin, or
- not complying with any other applicable
requirements for using the AO or GI
Legal means to prevent any use amounting to
the imitation of the AO or GI, even if the true
origin of the goods is indicated, even if used in
translated form, or even if accompanied by
terms such as “style”, “kind”, etc.

37. Scope of Protection (Article 11(1)(a)(ii)&(2))
Legal means to prevent use in respect of goods that
are not of the same kind or services, if such use:
- would suggest a connection with the beneficiaries
of the AO/GI, and would be likely to damage their
interests, or
- where applicable, where such use would be likely
to impair or dilute in an unfair manner, or take
unfair advantage of, the reputation of the AO/GI
Legal means to prevent any use amounting to
the imitation of the AO or GI, even if the true origin
of the goods is indicated, even if used in translated
form, or even if accompanied by terms such as
“style”,“kind”,etc.

38. Protection in Respect of Certain Uses
(Article 11(1)(b) and (3))
any other practice liable to mislead
consumers as to the true origin, provenance
or nature of the goods
Contracting Party shall, ex officio if its
legislation so permits or at the request of an
interested party, refuse or invalidate the
registration of a later trademark if use of the
trademark would result in one of the situations
covered by Article 11(1)

39. Generic Character (Article 12)
Protection against becoming generic
Exceptions:
- Prior use as a generic in a Contracting Party
is a possible ground for refusal
- If the GI/AO contains a term that is
considered generic in the Contracting
Party of Origin, other Members are not
obliged to protect such term

40. Safeguards (Article 13)
for prior trademarks
(applied for/ registered/ acquired through use in
good faith)
(NB: possible coexistence with later AO/GI)
personal names
(except if used in such a manner as to mislead
the public)
plant variety or animal breed denominations
(except if used in such a manner as to mislead
the public)

41. Geographical Areas with the Same Name
Homonymous AOs and GIs
(Note to Article 6 - International Registration)
Products originating in a
trans-border geographical area of origin
(Articles 2(2) and 5(4))

42. Refusal of Effects
of International Registration
Unlimited grounds for refusal
Notification of a refusal ex officio
or at the request of any interested party
Option for a Contracting Party to put in place a
transitional period for phasing-out prior use that is not
used as a ground for refusal (but not in respect of use
covered by a safeguarded right under Art. 13)
NB: Invalidation is still possible after the expiry of the one-
year period to notify a refusal

43. What’s next?

44. What next…
Working Group for the Preparation of Common
Regulations under the Lisbon Agreement and the
Geneva Act of the Lisbon Agreement
Draft Common Regulations
Financial Sustainability of the Lisbon Union
First meeting: June 7 to 9, 2016
Next meeting: April 2017
WIPO Assemblies, Assembly of the Lisbon Union
Financial Sustainability of the Lisbon Union
Next meeting : October 2017

45. On-going works on GIs
Standing Committee on the Law of
Trademarks, Industrial Designs and
Geographical Indications (SCT)
Geographical indications
Geographical indications - domain names
Trademarks - Protection of country names
Next meeting: March 2017

46. 1ère Foire internationale des produits dont la
qualité est liée à leur origine géographique
(OAPI-OMPI-AFD)
Yaoundé, Septembre 9 and 10, 2016

47. Thank you!
alexandra.grazioli@wipo.int