Improvements to the Lisbon Improvements to the Lisbon SystemSystem

Saravanan ASaravanan APhD CandidatePhD Candidate

RGSOIPLRGSOIPL

Lisbon at a Glance

What leads to improvement for Lisbon System?

Working Group on the Development of Lisbon

System

Different Sessions of WG Comparison of Lisbon 1958 & Geneva Act 2015

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Difference between AOOs & GIs:

• AOOs (Lisbon, Art.2)• Geographical denomination• Refers to quality or characteristics of a

specific product• Due exclusively or essentially to the

geographical environment (natural or human factors)

• AOO= Special category of GI• Only existing multilateral

registration system for the protection of AOOs

• Link with the place of origin is stronger in the case of an appellation of origin

• GIs (TRIPS, Art.22.1)• Indication • Refers to quality, reputation, or other

characteristic • Essentially attributable to its

geographical origin

GI can also be a symbol referring to or associated with a particular geographical area (e.g. the cartographic outline of France with a red itinerary for Burgundy wines)

International system that facilitate the protection geographical indications, i.e. “appellations of origin”, in countries other than the country of origin

By means of their registration with WIPO through a single single procedureprocedure, for a minimum of formalities and expense

Concluded in 1958 and revised at Stockholm in 1967, EIF on Sept 25, 1966 & Amended in 1979

Total Contracting Parties- 28 Administered by International Bureau International Bureau of WIPO

Keeps international register international register & publish bulletin ‘Appellations of origin’ ‘Lisbon ExpressLisbon Express’ database – to search AOO registered under

Lisbon Agreement

1) Failure of Worldwide system of higher protection for geographical denominations

Agreement has notnot been widely successfulwidely successful Total 28 members 28 members & appx 1/3rd joined since conclusion of

TRIPS Largely concentrated in the Mediterranean WorldMediterranean World

Algeria, Bosnia and Herzegovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Cuba, Czech Republic, Democratic People's Republic of Korea, France, Gabon, Georgia, Greece, Haiti, Hungary, Iran, Israel, Italy, Mexico, Montenegro, Morocco, Nicaragua, Peru, Portugal, Republic of Moldova, Romania, Serbia, Slovakia, Spain, the former Yugoslav Republic of Macedonia, Togo, Tunisia, Turkey

2) Entries of AOO – only on limited products3) Register shows AOO emanate from fewer than ten

countries (as of 2010) 11 countries hold 97.5% of all entries Top three hold over 78% One Country (France) alone hold 62.5% of total entries

Out of that 90% are for Wines & Spirits only)

4) Failure of negotiation in TRIPS Council To settle the operating principles Multilateral system for registration of GIs led to examination of led to examination of

Lisbon AgreementLisbon Agreement

Source: Daniel J Gervais, 11 Chi. J. Int'l L. 67 (2011)

Source: Daniel J Gervais, 11 Chi. J. Int'l L. 67 (2011)

Sept 2008, assembly of the Lisbon Union established a working group working group (WG)

Responsible for exploring possible improvements possible improvements to procedures under the Lisbon

To make it more attractive more attractive for users and prospective prospective new members While, preservepreserve the principles and objectives of the Lisbon Since 2009Since 2009, the Working Group has engaged in a full

review of the Lisbon International Registration System Possible extension to geographical indications Possible extension to geographical indications in addition to

appellations of origin

Various Sessions of WG Engaged in several meetings Submitted drafts & also proposed changes to Lisbon

System Total 10 Sessions Held at Geneva, Switzerland Participants:

Contracting Parties, Observers Representatives of International Intergovernmental Organizations

(WTO, EC, FAO, EU) Representatives of International non-governmental Organizations

(INTA, ABPI, ECTA, OriGIn, AIPPI)

Statement of grant Statement of grant of protection – new optional procedures new optional procedures to notify and record a statement of grant of protection of an appellation of origin

Administrative Instructions Administrative Instructions – new Rule new Rule in Lisbon Regulations to allow Director General to establish Administrative Instructions

that may facilitate the operationfacilitate the operation of the Lisbon system

Administrative Instructions could provide for electronic electronic communicationscommunications, including –

notification of AO registrations by WIPO – identical starting date to compute refusal period

communications to WIPO from Members agreed modes for electronic signatureelectronic signature

First Session of the Working Group agreed agreed – International Bureau submit to the Assembly of the Lisbon

Union (September 2009) draft new Rules 11bis and 23bis, draft new Rules 11bis and 23bis, and amendment of Rule 22and amendment of Rule 22

WG also agreed: International Bureau (IB) to conduct a survey conduct a survey among all

members, non-members, interested IGOs, NGOs To ascertain how the Lisbon system might be improvedhow the Lisbon system might be improved

To Conduct a study on relationship study on relationship between regional system (for protection of GI) & the Lisbon system

To examine the conditions for possibility of future accessionspossibility of future accessions

Results of the Survey:Results of the Survey: Most delegations in favour of two separate definitionstwo separate definitions

One for AOO- in line with Art 2 of Lisbon Agreement Other on GI- in line with Art 22.1 of TRIPS

No opposition No opposition for extending protection to traditional non-geographical denominations

No No need for any improvement improvement on Application and Registration procedures

No support No support for registration of designs or images as AOdesigns or images as AO

WG agreed to invite Secretariat to prepare,Secretariat to prepare, Study on possibility of dispute settlement possibility of dispute settlement within the Lisbon To explore in which situation explore in which situation DS might be appropriate and in what

form

DraftDraft provisions on certain matters addressed:

Proposed amendments to Rule 5(3) and Rule 16(1)amendments to Rule 5(3) and Rule 16(1) of

Lisbon Regulations

Also Agreed that, WG had made considerable progress considerable progress on

the development of the Lisbon system

WG had requestedrequested the secretariat to prepare a Draft New prepare a Draft New

InstrumentInstrument (DNI)

Basis for Protection and Definition: (Art 2 & 3) Art 3 should be drafted in a less complex mannerless complex manner Should follow more closelyclosely to the current definitions

Scope of Protection: (Art 4 & 9) Agreed to provide, high and uniform level high and uniform level of protection for bothboth AO

& GI Which might allow for a larger membership

Several delegations are in favour to maintain Lisbon Agreement in combination with a Protocol combination with a Protocol to it

Requested Secretariat to prepareprepare Draft New Instrument (DNIDNI) & Draft Regulation (DRDR)

Further discussions regarding the legal form legal form of the DNI and its possible implications possible implications (Revised Lisbon Agreement, New Treaty/Protocol supplementing the Agreement)

Revised texts & observations made and incorporate alternative provisions and different options alternative provisions and different options between brackets

Ex: -Separate instruments /independent GI and AO definitions

Single or dual level of protection / single or dual Register

Revised and simplified versions Revised and simplified versions of the DNI and the DR to be prepared by the Secretariat for its 6th session

WG clarified, Diplomatic Conference Diplomatic Conference certainly to be

convened by the Assembly for revising the Lisbon

Agreement

WG agreed to establish an electronic forum establish an electronic forum

To enrich the debate enrich the debate and improving the substantive work

Secretariat would organize a workshop on DS workshop on DS within the

Lisbon System as a side event

WG reiterated general commitment to two-fold mandatetwo-fold mandate

RevisionRevision of Lisbon Agreement

EstablishmentEstablishment of an international registration system

Wide support for one single DNI covering one single DNI covering

Both AOO & GI Both AOO & GI with separate definitions

Establishment of single international register single international register cover both AO

& GI

WG examined Chapters I to IV Chapters I to IV of DNI and DR

Detailed discussion on Art 13Art 13 (Safeguards in Respect of

other Rights) of the DNI

WG approve the recommendation made to Lisbon

Assembly to convene a Diplomatic Conference convene a Diplomatic Conference for adoption

of Revised Lisbon Agreement in 2015

WG examined in detail examined in detail all the provisions of DNI &

DR

Welcomed the significant progress significant progress from members,

observers and non members to convene a successful

Diplomatic Conference in 2015

Half-day conference on DS conference on DS within Lisbon System had

been held as a side event of current session

Purpose was to indentify key provisions indentify key provisions in DNI & DR taken

to Diplomatic Conference

WG concluded some pending issuesconcluded some pending issues, Title Title and Preamble Preamble of DNI

Possible introduction introduction of Maintenance fees fees (Art 7.2.b) & Individual

fees (Art 7.4)

Safeguarding rights in respect of prior trademark rights prior trademark rights (Art 13.1)

Issues of promoting transparency promoting transparency (R 5.5.iii) & amount of fees (R

8.1)

SettledSettled some issues on, Title & Preamble Whether Art 9.1 should be kept & Art 9.2 to be moved to Art

6 Whether Art 10.2, r/w Art 15.2, should refer to any other or

to more extensive protection

Some pending issuespending issues includes, Fee provisions, scope of protection, protection against

becoming generic, safeguards in respect of prior trademark rights

Phasing out periods for prior use (if any) and where prior use was not raised as a ground for refusal

Took place at WIPO HQ

Aim was to adopt a new Act adopt a new Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration

Which would render the Lisbon System more attractive for states and users, while preserving its principles and objectives

Negotiators approved a revision Negotiators approved a revision of an international registration system providing protection for names that identify the Geographical Origin of products

OutcomeOutcome of the diplomatic conference and called the adoption adoption of the Geneva Act Geneva Act a “transcendental momenttranscendental moment” for the Lisbon Union and WIPO

Geneva Act helps to promotepromote globally marketed products Other changesOther changes affect

fee provisions, scope of protection, protection against becoming generic, and safeguards for respect of prior trademark rights

The Geneva Act will enter into force enter into force three months after five eligible parties have deposited their instruments of ratification or accession

Total 11- Total 11- Bosnia and Herzegovina, Burkina Faso, Congo, France, Gabon, Hungary, Italy, MaliMali, Nicaragua, Peru, Portugal, RomaniaRomania, Togo

None has deposited None has deposited their instrument yet EIF

New definitionNew definition of AOs and GIs and of their scopescope of protection FlexibilityFlexibility about how countries may provide protection for AOs and

GIs, including through trademarktrademark system if no AO or GI system is in place

Safeguards for prior trademark rights Safeguards for prior trademark rights and other prior rights such as personal names, plant varieties or animal breed denominations

Infringement proceedingsInfringement proceedings may be initiated by any public authority or interested party (Art 14)

Accession to the Geneva Act is open to international organizations open to international organizations competent for GI protection (e.g. European Union and African Intellectual Property Organization)

Countries may request payment of an individual feeindividual fee GrantGrant of protection will be notifiednotified The changes are designed specifically to attract new members attract new members to the

Lisbon Agreement

S No Lisbon Agreement 1958 Geneva Act 2015

1 Total Articles- 18 34342 Subject Matter:

Art 2- Appellations of OriginBoth,Both,A 2(i)- Appellations of OriginA 2 (ii)- Geographical Indications

3 Content of Protection: - Art 3: True Origin: ensured against any usurpation or imitation- Translated Form: kind, type, make, imitation, or the like

- A. 11: True Origin: Imitation onlyImitation only- Translated Form: style, kind, type, make, imitation, method, as produced in, like, similar or the like

4 Application for International Registration:Not clearly mentioned

-Detailed Application procedure (A 5) & - International Registration (A 6)

5 Fee Payment: SingleSingle Fee- for each AOO (Art 7) - Fee Reduction Fee Reduction for Developing & LDC (A 7)

- Individual fee (A 7. 4.a)- not higher than ot higher than equivalent amountequivalent amount required under national or regional legislation - Non Payment (A 7.4.b)- protection is renounced renounced

6 Period of Validity: Art 7Not mentioned the period Protection(Art. 8.1)- IndefinitelyIndefinitely

Cancellation (Art 8.2.a)- At the request At the request of natural person or legal entity competent Authority may request Intl Bureau to cancel International Registration

7 Safeguards in respect of Other Rights: Not listed

Prior Trademark Rights- Acquired in good faith good faith (A 13.1) Rights Based on Plant Variety or Animal Breed Denomination: (A 13.3) Members can use plant variety or animal breed denomination exceptexcept in a manner to misleadmislead the public

8 Refusal & Other actions:

Not discussed

Art 15: RefusalRefusal and Other Actions in Respect of International RegistrationsA 15.1: Time limit-Time limit- Specified in the RegulationsA 15.5: Applicable of National TreatmentNational TreatmentA 16: Withdrawal of Refusal- Shall be recordedrecorded in International Register

9 Notification of Grant of Protection:Not discussed

International Bureau shall recordrecord notification in International RegisterRegister and PublishPublish it (Art 18)