Improvements to the Lisbon System

Improvements to the LisbonImprovements to the Lisbon
SystemSystem
Saravanan ASaravanan A
PhD 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

 Images, content, and published articles are
for reference and illustrative purposes only.
Under no circumstances should any image,
logo, content or article be viewed as an
endorsement for this presentation or any of
its contents. This presentation is intended for
educational purposes only.
3

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 singlesingle
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 BureauInternational Bureau of WIPO
 Keeps international registerinternational 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 members28 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 products
3) 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 ofled to examination of
Lisbon AgreementLisbon Agreement

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

 Sept 2008, assembly of the Lisbon Union established a
working groupworking group (WG)
 Responsible for exploring possible improvementspossible improvements to procedures
under the Lisbon
 To make it more attractivemore attractive for users and prospectiveprospective 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 indicationsPossible 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 grantStatement of grant of protection – new optional proceduresnew optional procedures
to notify and record a statement of grant of protection of an
appellation of origin

Administrative InstructionsAdministrative Instructions – new Rulenew 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 electronicelectronic
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 agreedagreed –
 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 surveyconduct 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 relationshipstudy 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 oppositionNo opposition for extending protection to traditional non-
geographical denominations
 NoNo need for any improvementimprovement on Application and
Registration procedures
 No supportNo 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 settlementpossibility of dispute settlement within the Lisbon
 To explore in which situationexplore 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 progressconsiderable progress on
the development of the Lisbon system
 WG had requestedrequested the secretariat to prepare a Draft Newprepare 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 levelhigh 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 Protocolcombination with a Protocol to it
 Requested Secretariat to prepareprepare Draft New Instrument
(DNIDNI) & Draft Regulation (DRDR)

 Further discussions regarding the legal formlegal form of the DNI and
its possible implicationspossible implications (Revised Lisbon Agreement, New
Treaty/Protocol supplementing the Agreement)
 Revised texts & observations made and incorporate
alternative provisions and different optionsalternative 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 versionsRevised and simplified versions of the DNI and the DR to
be prepared by the Secretariat for its 6th session

 WG clarified, Diplomatic ConferenceDiplomatic Conference certainly to be
convened by the Assembly for revising the Lisbon
Agreement
 WG agreed to establish an electronic forumestablish an electronic forum
 To enrich the debateenrich the debate and improving the substantive work
 Secretariat would organize a workshop on DSworkshop 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 coveringone single DNI covering

Both AOO & GIBoth AOO & GI with separate definitions
 Establishment of single international registersingle international register cover both AO
& GI

 WG examined Chapters I to IVChapters 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 Conferenceconvene a Diplomatic Conference for adoption
of Revised Lisbon Agreement in 2015

 WG examined in detailexamined in detail all the provisions of DNI &
DR
 Welcomed the significant progresssignificant progress from members,
observers and non members to convene a successful
Diplomatic Conference in 2015
 Half-day conference on DSconference on DS within Lisbon System had
been held as a side event of current session

 Purpose was to indentify key provisionsindentify key provisions in DNI & DR taken
to Diplomatic Conference
 WG concluded some pending issuesconcluded some pending issues,

TitleTitle and PreamblePreamble of DNI
 Possible introductionintroduction of Maintenance feesfees (Art 7.2.b) & Individual
fees (Art 7.4)
 Safeguarding rights in respect of prior trademark rightsprior trademark rights (Art 13.1)
 Issues of promoting transparencypromoting 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 Actadopt 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 revisionNegotiators 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
adoptionadoption of the Geneva ActGeneva 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 forceenter 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 depositedNone 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 rightsSafeguards 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 organizationsopen 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 membersattract new members to the
Lisbon Agreement

S No Lisbon Agreement 1958 Geneva Act 2015
1 Total Articles- 18 3434
2 Subject Matter:
Art 2- Appellations of Origin
Both,Both,
A 2(i)- Appellations of Origin
A 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 ReductionFee Reduction for Developing & LDC (A 7)
- Individual fee (A 7. 4.a)- not higher thanot higher than
equivalent amountequivalent amount required under national
or regional legislation
- Non Payment (A 7.4.b)- protection is
renouncedrenounced

6 Period of Validity: Art 7
Not mentioned the period Protection(Art. 8.1)- IndefinitelyIndefinitely
Cancellation (Art 8.2.a)- At the requestAt 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 faithgood 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 Registrations
A 15.1: Time limit-Time limit- Specified in the Regulations
A 15.5: Applicable of National TreatmentNational Treatment
A 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)

Improvements to the Lisbon System

Improvements to the Lisbon System

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