Presentation held by Marie-Paule Rizo, Head, Industrial Design and Geographical Indications Law Section, WIPO, at the Brussels Briefing ‘Geography of food: reconnecting with origin in the food system’, organized by CTA on 15th May 2013. More on: http://brusselsbriefings.net/

1. Brussels Briefing n. 31
Geography of food: reconnecting with origin in the food
system
15th May 2013
http://brusselsbriefings.net
Existing global and regional legal frameworks for
origin-branding and protecting geographical
indications and traditional products
Marie-Paule Rizo, WIPO

2. World
Intellectual
Property
Organization
Geographical Indications as
Distinctive Signs for Collective Use:
Developing Brands for Origin-Products
Marie-Paule Rizo
Head of Industrial Design and
Geographical Indication Law Section

3. Five multilateral treaties applicable to GIs:
WIPO: Paris Convention for the Protection of
Industrial Property(1883)
Madrid Agreement on the Repression of False or Deceptive Indications of
Source on Goods (1891)
Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration (1958)
Madrid Agreement and Protocol for the International Registration of
Marks (1891 and 1989)
WTO: TRIPS Agreement (1994)
International legal framework

4. The TRIPS Agreement
« Members should provide the legal means for interested parties to
prevent:
the use of any means in the designation or presentation of a good
that indicates or suggest that the good… originates in a
geographical area other than the true place of origin in a manner
which misleads the public as to the geographical origin of the
good;
any use which constitutes an act of unfair competition… »
General standard of protection
(Art. 22.2)

5. How to protect GIs?
Legislation on unfair competition
Collective or certification marks
Sui generis system
Administrative systems (labelling, etc.)

6. Different modes of protection can complement each other
ROQUEFORT (PDO)

7. Why protect GIs at the international level
Where do you market the products identified by the
GI?
Territoriality principle in IP law

8. How to protect GIs at the
international level?
Bilateral treaties
Regionally: EU, OAPI
Multilateral treaties
Madrid System for the International Registration of Marks
Lisbon Agreement for the International Registration of
Appellations of Origin

9. Lisbon Union: 28 Member States
(on July 4, 2013)
Africa (6)
Algeria
Burkina Faso
Congo
Gabon
Togo
Tunisia
Asia (4)
Georgia
Islamic Rep. of Iran
Israel
DPR of Korea
America (6)
Costa Rica
Cuba
Haiti
Mexico
Nicaragua
Peru
Europe (12)
Bosnia and Herzegovina
Bulgaria
Czech Rep.
France
Hungary
Italy
Moldova
Montenegro
Portugal
Serbia
Slovakia
The FYR of Macedonia
The Lisbon Agreement

10. France 509
Czech Rep. 76
Bulgaria 51
Italy 33
Hungary 28
Georgia 20
Cuba 19
Mexico 14
Peru 8
Algeria 7
Portugal 7
Tunisia 7
DPR of Korea 6
Slovakia 6
FYR of Macedonia 4
Serbia 3
Montenegro 2
Costa Rica 1
Israel 1
Moldova 1
908 registrations – 803 in force

11. Establishes an international register for appellations of origin and a
procedure for their registration
Provides a definition of appellation of origin
(Art. 2(1)):
“the geographical denomination of a country, region or
locality which serves to designate a product originating
therein, the quality/characteristics of which are due
exclusively or essentially to the geographical environment,
including natural and human factors.”
The Lisbon Agreement
Principles

12. Flexibility:
in practice traditional appellations that have the “quality link”
have been assimilated to appellations of origin: e.g.
MUSCADET (Nº 279, wine, France)
REBLOCHON (Nº 458, cheese, France)
VINHO VERDE (Nº 564, wine, Portugal)
The Lisbon Agreement
Principles

13. Any sort of product may be designated by an AO:
- natural products (e.g. mineral water, marble)
Karlovarska Voda, Marble Lepenica
- manufactured products (e.g. crystalware, porcelain)
Joblonec, Herend
- agricultural, food and handicraft products
Fontina, Huile d’olive de Nyons, Bordeaux, Olinalá
The Lisbon Agreement

14. INTERNATIONAL
BUREAU
Records in the International Register
Publishes in Bulletin Appellations of origin
Notifies other members
OTHER MEMBERS examine
12
months
REFUSAL
12
months
NO REFUSAL = protection
The Lisbon Agreement: General view of the procedure
country of origin Appellation protected as such

15. States that have not refused a notified AO within 12 months from
receipt of the notification
must ensure protection of the appellation against usurpation
or imitation, even if the true origin of the product is stated, or if
the appellation is used in translated form or accompanied by a
disclaimer or a delocalizer (“type”, “method”, “system”)
cannot deem that the appellation has become generic as long
as it remains protected as an appellation of origin in its country
of origin
The Lisbon Agreement
Effects of international registration

16. Term: Protection of the appellation of origin in each member
country that has not refused protection continues without
renewal as long as the appellation is protected as such in its
country of origin
No renewal is required to maintain the international registration
The Lisbon Agreement

17. Single instrument covering AOs and Gis: two
definitions
Single,high level of protection
Substantive provisions applicable to both
Accession Possibility for IGOs (e.g., EU)
Revision of the Lisbon System

18. Development of the Lisbon system
The work ahead:
Diplomatic Conference for the adoption of a revised
Lisbon Agreement in 2015?

19. Rule 9(4)(x) of the Common Regulation expressly provides for
registration of collective or certification marks
1247 collective or certification marks registered
500 in classes 29 to 33
Madrid System

20. Madrid Union
1 Agreement only
34 Protocol only (including EU)
55 Agreement and Protocol
90 Members

21. basic registration
Precondition or
basic application
OFFICE OF
ORIGIN
checks correspondence
with the basic application/
registration
INTERNATIONAL
BUREAU
checks formalities
records in the International Register
publishes in the International Gazette
notifies the designated Contracting Parties
OFFICE OF
DESIGNATED
CP
substantive examination
12/18
months
prov.refusal
12/18
months
no refusal = effect of a national
registration
General Overview of the Procedure

22. Madrid System
NAPA VALLEY

23. Conclusion
Collective signs indicating geographical origin:
Multi-functionality
Potential
Readily available emotion
Emotion is the basis for reputation
Reputation needs stewardship
Reputation = Intangible Asset = (collective) Intellectual
Property
Different concepts, different modes of protection

24. World
Intellectual
Property
Organization
THANK YOU!
Mariepaule.rizo@wipo.int