Geographical indications the international legal framework latest developments

Geographical indications: the international legal framework; latest developments Bratislava, December 1 st. , 2009 World Intellectual Property Organization Marie-Paule Rizo Head of Geographical Indication and Industrial Design Law Section Brands and Designs Division WIPO

International legal framework 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)

The Paris Convention- Provisions relevant to the protection of GIs Article 1(2) « The protection of industrial property has as its object… indications of source or appellations of origin… »

The Paris Convention- Provisions relevant to the protection of GIs Article 1(3) « Industrial property shall be understood in the broadest sense and shall apply not only to industry and commerce, but likewise to agricultural and extractive industries and to all manufactured or natural products, for example, wines, grain tobacco leaf, fruit, cattle, minerals, mineral waters, beer, flowers, and flour. »

The Paris Convention - Provisions relevant to the protection of GIs Article 10. 1) Goods making a direct or indirect use of a false indication of the source of the goods must be seized on importation

Paris Convention (text of 1925) • Direct reference Cognac, Roquefort, Havana, Porto, Tequila… • Indirect reference

The Paris Convention - Provisions relevant to the protection of GIs Article 10 bis • Obligation to assure effective protection against acts of unfair competition: any act of competition contrary to honest practices in industrial or commercial matters The following acts, in particular, : • acts likely to create confusion by any means whatever with the establishment, the goods, or the industrial or commercial activities, of a competitor • false allegations in the course of trade likely to discredit the establishment, the goods, or the activities, of a competitor; • indications or allegations liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for their purpose, or quantity, of the goods

The TRIPS Agreement • Definition (Art. 22. 1) • Standard level of protection (Art. 22. 2) • Additional protection for wines and spirits (Art. 23) • Exceptions (Art. 24)

The Lisbon Agreement (1958) 26 Members States

The main principle of the Lisbon Agreement The States undertake to protect on their territories, in accordance with the terms of the Agreement, the appellations of origin of other countries of the Lisbon Union recognized and protected in the country of origin and registered at the International Bureau of WIPO

The Lisbon Agreement- Principles • 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 (2/2) 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 (2/2) 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

General view of the procedure country of origin Appellation protected as such INTERNATIONAL BUREAU Records in the International Register Publishes in Bulletin Appellations of origin Notifies other members tional a n r e t In ication appl OTHER MEMBERS examine 12 months REFUSAL 12 months NO REFUSAL = protection

Declaration of refusal • Within a time limit: one year from the receipt of the notification of registration • Indicate the grounds for refusal, e. g. – – – Denomination does not meet the definition Generic indication of a type of product The denomination is not geographical Existence of an earlier trademark The appellation is refused only partially: it cannot be used to prevent the use of a specified homonymous appellation

The Lisbon Agreement- after registration (2/3) Effects of international registration : 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- after registration (3/3) – 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 887 appellations of origin registered, of which 813 are in force Romăneşti Parmigiano-Reggiano Tequila Pisco Muscat de Kélibia Habanos Slovenský Oštiepok Champagne …

Relationship

WTO- the Doha Agenda 1. Multilateral register for wines and spirits (TRIPS Art. 23. 4) 2. Extension (? ) July 2008 - call for negotiation in parallel of three IP issues: GI Register/Extension/TRIPS-CBD

WIPO- Possible improvements to the procedures under the Lisbon Agreement • WG established by the Assembly of the Lisbon Union met in March 2009 and will hold further meetings to explore further improvements

Possible improvements of the Lisbon system The Assembly of the Lisbon Union adopted at its session in September 2009: • new Rule 11 bis: optional statements of grant of protection • new Rule 23 bis: Administrative Instructions electronic communications

Possible improvements of the Lisbon system The Assembly agreed that: • the IB conduct a survey to ascertain how the Lisbon system might be improved • the IB conduct a study on the relationship between regional systems for the protection of geographical indications and the Lisbon system

Thank you!