3 rd SESSION OF THE WIPO WORKING GROUP ON THE DEVELOPMENT OF THE LISBON SYSTEM (APPELLATION OF ORIGIN), MAY 2011, GENEVA

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1 1 June rd SESSION OF THE WIPO WORKING GROUP ON THE DEVELOPMENT OF THE LISBON SYSTEM (APPELLATION OF ORIGIN), MAY 2011, GENEVA Reported by Florent Gevers, Chair of the ECTA Geographical Indications Committee, BE Summary ECTA, represented by Florent Gevers, Chair of the ECTA Geographical Indications Committee and Jan WREDE, Vice Chair of the same Committee, attended the 3 rd session of the WIPO Working Group on the development of the Lisbon System (appellation of origin) from 23 to 27 May 2011 in Geneva. The draft amended provisions to the Lisbon Agreement, prepared by the WIPO Secretariat, were discussed. For each of the 7 analysed provisions, different proposals and options were suggested, but hardly any discussion was made on the preferred options. The most controversial Article 5(6) of the Lisbon Agreement, which provides for the expropriation of an earlier trade mark versus a later geographical indication (GI) remained practically unchanged in the first proposal. However, co-existence was suggested in the 2 nd proposal at the condition that the prior trade mark is notified to WIPO. If WIPO wants to open up the Lisbon Agreement, this Article must be entirely changed. Next meeting with a new text will take place in November 2011 in Geneva. 1. Introduction The present report is a follow up of the one made on 13 September 2010 regarding the 2 nd Session. The Lisbon Agreement is not doing too well: the number of Member States is currently 27 and the number of registered appellations of origin is not increasing. So, after having revamped the Madrid System on trade marks, WIPO has taken the initiative to rejuvenate the Lisbon Agreement. The purpose is to attract new countries, but also international intergovernmental organisation such as the European Union, OAPI, etc. Therefore, the present exercise might lead to amendments to the existing system, to a totally new system or as originally for the Madrid System to a Protocol. This has not yet been decided upon. The current discussion only relates to what should be changed in view of the above. ECTA Secretariat, Rue des Colonies 18/24, Box 8, 9 th Floor, BE-1000 Brussels, Belgium Tel: +32/ Fax: + 32/ ecta@ecta.org Website: A company limited by guarantee. Registered in England and Wales No Registered address: 15 Southampton Place, London, WC1A 2AJ, England VAT No. BE

2 It must be underlined that the proposed changes concern the Agreement itself and its Rules. No distinction has been made between the two during the discussions. This will take place later on. 2. Generalities The 3 rd Session was attended by 18 Member States, 12 non-member States and 3 international governmental organisations, namely WTO, European Union and OAPI. It is important to underline that 5 non-governmental organisations (NGOs) attended the meeting, namely ECTA, MARQUES, CEIPI, INTA and OriGIn. Why is this important? Because surprisingly enough, with the exception of France and maybe also Iran and Moldavia, the official delegates hardly made any comments. 9 out of the 10 comments were made by one of the 5 NGOs. It is also to be deplored that the delegate of the European Union, coming from DG MARKT, only made a 2 minute intervention just saying that the EU was following with interest the work undertaken. It is going to launch a study on the protection of GIs for non-agri products (handy craft products), which will probably be released at the end of the present year. Depending on the issue of this study, the Commission will suggest a 4 th (or 5 th ) Regulation on GIs as this is a TRIPS obligation. It must once again be underlined that GIs are effectively part of industrial property, but in many countries and in the EU, they are usually treated by agri people or experts. This is the case in the European Union where the foodstuff, wine and spirit Regulations are ruled by DG AGRI and by 3 different entities. A novelty: a new non-agri Regulation (handy craft products) will most probably handled by DG MARKT. It has already been suggested that the Register would be held by OHIM. 3. Documents prepared by WIPO Results of the Survey on the Lisbon System Document LI/WG/DEV/2/2 Summary by the Chair Document LI/WG/DEV/2/4 Draft report of the 2 nd Session Document LI/WG/DEV/2/5 PROV For the present meeting, WIPO issued a new document LI/WG/DEV/3/2 Draft Provisions on Certain Matters Addressed by the Working Group in the Context of the Review of the Lisbon System dated 16 March It contains 24 pages, available in English, French and Spanish, which are the 3 official languages of the Lisbon Agreement). This document needs some explanation. First of all, it is divided into two parts. The first part is Annex 1 and contains proposed amendments to the existing Lisbon Rules. If adopted by the meeting, they will be proposed at the next session of the Lisbon Agreement Working Group, which will normally take place somewhere in November

3 The two suggested amendments are of minor importance and will not be discussed in the present paper. Modifications concern Rule 5(3) and Rule 5(6). The second part is Annex 2 (24 pages, from item 1 to 39) and consists of a certain number of new draft provisions based on the above mentioned document LI/WG/DEV/2/2 (the Agreement and the Rules are mixed). During the discussions of the 2 nd Session, different proposals were made. Therefore, the Secretariat of WIPO, as requested, prepared different proposals with different options. Furthermore, inside these options, alternatives have been suggested that are indicated between square brackets. Although well explained by WIPO, the different proposals were consequently difficult to understand and analyse. Each time the current text is put on the left side and the new proposed text on the right side, with the proposed modifications in bold, so that they very clearly appear. Furthermore, for each of the draft proposals, the Secretariat made an extremely well written explanation. 4. General comments on the proposed text Seven different proposals were submitted, indicated from A to G. Before rapidly analysing these different proposals, it must be underlined that the Secretariat was inspired by different existing legal texts, namely: the existing Lisbon Agreement; the TRIPS Agreement so much on GIs as on trade marks; once in a while also the EU Regulations on foodstuff, wine and spirits. This led to some confusion, because the wording used in the different legal texts is not the same. For instance, sometimes the word good is used, while other times the word product is used. The Secretariat has to do some harmonisation work to that effect. It has been agreed upon that the new text will, as it nowadays always is the case, start with definitions. It must be underlined that the new scheme proposed by the Secretariat foresees two layers of protected GIs, namely GIs such as they appear in the TRIPS Agreement on the one hand and on the other hand appellations of origin, which are a copy of the existing Lisbon System. Appellations of origin must be considered as a sub species of GIs. We also have the same distinction between two of the EU Regulations on foodstuff and wine (but not the one for spirits). But contrarily to the EU System, in the existing proposal, a higher degree of protection is provided for regarding appellations of origin than for GIs. This was criticised by the majority of the attending officials, so it might be that, although it would have two different kinds of protected GIs, there will only be one layer of protection. 3

4 5. Short comments on each of the draft provisions A) Draft provision A: Basis for protection and definitions Contracting parties must foresee the protection of GIs and appellations of origin, such as filed by the Lisbon Agreement. Two kinds of protection are foreseen: one for GIs and one for appellations of origin (stricter conditions). B) Draft provision B: Filing of international applications Who can file an international applications for GIs? Normally, the contracting party. However, it is also provided for that the interested party may apply directly at WIPO. The condition is that the country of origin certifies that the applied for GI corresponds to the necessary requirements in the home country. Particulars are also given as to what kind of information must be given and in what circumstances they can be corrected. C) Draft provision C: Accession criteria for intergovernmental organisations Just as with the Madrid Protocol, WIPO foresees the possibility for intergovernmental organisations to become member of the new System, more specifically the EU and OAPI. D) Draft provision D: International registration The applied for GI must meet the required definition such as appearing under A above and this in the country of origin. E) Draft provision E: Scope of protection It foresees two different layers of protection. A stricter layer for appellations of origin and a more loose protection for GIs. This is contrary to the EU Regulations, where the same protection is provided for both. F) Draft provision F: Prior use This concerns the fate of prior trade marks versus later appellations of origin and GIs. Today, this is foreseen in Article 5(6) of the Lisbon Agreement and is considered as the main stumbling block for a country wanting to become member of the Lisbon Agreement. Indeed, Article 5(6) provides for the expropriation, without any exception of an earlier trade mark versus a later appellation of origin. For many, this is totally unacceptable: it is anti-trips Agreement and it is not foreseen in any GI Regulation of the EU. To the surprise of some, this provision has been retained in the first proposal. However, whilst the existing Lisbon Agreement provides for a phase out of maximum two years, now a phase out of five or ten years is suggested. Additionally, it is foreseen that instead, the phase out would be restricted to generic indications and not to trade marks. If it is restricted to generic indications, it is probably acceptable. A second draft provision provides for that the prior trade mark will be entitled to co-exist with the later GI or appellation of origin. However, there is a condition, namely that the right holder, who is the prior owner of the trade mark, must advise the International Bureau of the existence of its prior identical or similar trade mark at the latest one year after the publication of the GI or the appellation of origin. This condition is evidently not acceptable. 4

5 With the support of INTA, ECTA very heavily disputed these provisions and underlined that, if one of the main purposes of the exercise is to attract new countries, this will not be achieved if this expropriation provision is maintained. G) Draft provision G: Possibility of third parties to have the GI or appellation of origin refused in the country of origin Conclusion As already explained, most of the comments were made by the NGOs. Furthermore, although requested by the WIPO Secretariat, hardly any comments were made on the different provisions and options, so that one wonders how the next draft prepared by the Secretariat will look like. The summary of the Chair can be found at: The 4 th meeting will be held in November