Transcript LISBON AGREEMENT FOR THE PROTECTION OF …

GEOGRAPHICAL INDICATIONS AND
APPELLATIONS OF ORIGIN: AN OVERVIEW
Florence Rojal
Legal Officer
Lisbon Registry
Brands and Designs Sector
Tbilisi
12 November
2012
Distinctive Signs
Distinctive Signs for Individual Use
Trademarks (goods & services)
Distinctive Signs for Collective Use
Collective marks
Certification marks
Geographical indications
Appellations of origin
Indications of source
Subject-Matter of Protection (GIs and AOs)
Indication of a Connection between Characteristics
of Products and their Geographical Origin
Informs consumers of the uniqueness of the products
derived from this connection (typicality)
Represents the collective goodwill derived from this
uniqueness (reputation)
Value-added
The higher the reputation the higher the commercial
value
Differences between GIs and AOs
AOs (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)
GIs (TRIPS, Art.22.1)
Indication
Refers to quality, reputation, or other
characteristic
Essentially attributable to its
geographical origin
AO= Special category of GI
Only existing multilateral
registration system for the
protection of AOs
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)
Different systems of protection worldwide

Multilateral Agreements
Protection of GIs under TRIPS
Protection of AOs under the Lisbon
Agreement
-Legal protection they provide is
based on various means of
protection on the national level: an
act of public law (law, decree,
administrative decision, ordinance),
or a judicial decision
General laws focusing on business
practices (unfair competition and
consumer protection provisions)
Specific protection systems for GIs and
AOs (sui generis)
Trademark law provisions devoted to
collective marks and/or certification and
guarantee marks
Administrative schemes of label control

Regional Systems of Protection (EU,
OAPI…)

Bilateral Agreements
Under such agreements two States or
two trading partners agree to protect each
other’s GIs
Sui Generis Systems for GIs and AOs
Legal protection is based on an act of public law
(law, decree (ex: France), ordinance (Switzerland)…)
adopted at the conclusion of an administrative
procedure involving representatives of the producers
concerned and the government administration
A group or a natural or legal person may apply for
the registration of a geographical indication or the
promulgation of a decree establishing an appellation
of origin
The application process typically involves an
opposition procedure
Collective Marks and Certification or Guarantee Marks
Collective Marks
Type of mark reserved for the use by the members of a
collective body (ex: association or cooperative of manufacturers,
producers or traders)
Certification Marks
Owned by a certification authority (local government entity or
private association which is not itself engaged in the production
or the trade of the product concerned)
Agricultural Label
Registered as a collective certification mark in the name of the
entity that controls its use and certifies that a foodstuff or a nontransformed agricultural product (such as cereal seeds)
possesses a combination of specific characteristics and a level
of quality which is higher than that of similar products
Legal Regulation of Business Practices
Unfair Competition Law
Commercial practices which mislead the public with
respect to the geographical origin of products
constitute an act of unfair competition
Administrative Regulations
Administrative regulations of product labeling and
food safety standards represent another means of
ensuring fair trade and consumer protection
Regional systems of protection (EU)
Pecorino Romano (PDO)
Arroz del Delta del Ebro (PGI)
Examples of Certification Trademarks
Collective Marks
Protection of GIs in Foreign Markets
Possible exceptions to exclusive rights over a GI:
Prior rights (previous TM rights, or good faith use)
Generic terms
Homonymous indications
Geographical Indications (GI) and Appellations of
Origin (AO)
WIPO’s Role
Administration of several international agreements relevant
for the protection of GIs/AOs
Forum for discussion of possible ways to improve the
international protection of GIs/AOs
 Standing Committee on the Law of Trademarks, Industrial Designs and GIs
 Working Group on the Development of the Lisbon System
Provision of technical assistance
Technical Assistance
Drafting Legislation
Application Criteria for Establishment GI or AO
Monitoring and Enforcement Procedures
Protection under International Treaties
Overview of the international instruments
related to the protection of GIs/AOs
Paris Convention (1883)
Madrid Agreement (1891)
(repression of false and deceptive indications of source)
Madrid Agreement and Protocol (1891, 1989)
(international registration of marks)
Lisbon Agreement (1958)
Bilateral Agreements
TRIPS Agreement (1994)
Overview of the Lisbon Agreement
Established to facilitate the international protection of
appellations of origin (AOs) through a single registration
procedure
AO definition:
‘The geographical denomination of a country, region, or
locality,which serves to designate a product originating
therein, the quality or characteristics of which are due
exclusively or essentially to the geographical
environment, including natural and human factors’.
Administered by WIPO, which keeps the International
Register of AOs
Lisbon Union: 27 Member States
Asia (4)
Africa (6)
Algeria
Burkina Faso
Congo
Gabon
Togo
Tunisia
Georgia
Islamic Rep. of Iran
Israel
DPR of Korea
America (6)
Costa Rica
Cuba
Haiti
Mexico
Nicaragua
Peru
Europe (11)
Bulgaria
Czech Rep.
France
Hungary
Italy
Moldova
Montenegro
Portugal
Serbia
Slovakia
The FYR of Macedonia
905 registrations – 800 in force
France
Czech Rep.
Bulgaria
Italy
Hungary
Georgia
Cuba
Mexico
Peru
Algeria
508
76
51
31
28
20
19
14
8
7
Total registered since 1995: 170
- of which since 2003: 55
Portugal
Tunisia
DPR of Korea
Slovakia
FYR of Macedonia
Serbia
Montenegro
Costa Rica
Israel
Moldova
7
7
6
6
4
3
2
1
1
1
The Lisbon Agreement
Substantive Requirements
Possible Responses by Other Contracting
Parties
Legal Effect
Substantive Requirements (1)
Protection in the country of origin. Ex ante recognition
required (different means of protection allowed)
Protection in other Lisbon countries is subject to the
Lisbon definition of “Appellation of origin” (Art. 2(1))
All categories of products can be protected under
Lisbon (food, beverages, handicrafts…)
Substantive Requirements (2)
Entitlement to file applications
The competent authority of the country of origin
Registration shall be effected in the name of those
having, under their national legislation, a right to use
the appellation
Possible Responses by Other Contracting
Parties
Declaration of refusal (Art. 5(3) and Rule 9)
-Within one year
-indication of the ground of refusal (any ground)
Statement of grant of protection (Rule 11bis)
Advice of grant of a transitional period to third parties
(Art. 5(6) and Rule 12)
Invalidation (Rule 16)
Ground for refusal: existence of 2 prior
registered TMs using ‘Parma’ in Mexico
Ground for refusal: risk of confusion
as to geographical origin of the product
Legal effect of an international registration under
Lisbon
Ensures simultaneous protection against any
usurpation or imitation of the registered AO in the
other Lisbon countries (except: those that have
refused or invalidated)
Protects the registered geographical denomination
against becoming generic in any of those Member
States (Art.6)
Provides standing for taking legal action
(Art.8)
Scope of Protection (Art. 3)
usurpation
even if true
origin is
indicated
imitation
even if used
in translated
form
even if accompanied by terms such as
“kind”, “type”, “make”, “imitation”
Main objective
WG Mandate: Improve the Lisbon system to make it
more attractive to users and potential new members of
the Lisbon Agreement, while preserving the principles and
objectives of the Agreement.
In sum:
Attract new members (i.e. through accession by IGOs)
Increase the number of international registrations
In particular, through the establishment of an
international registration system for GIs
For further information…
Lisbon system web page:
http://www.wipo.int/lisbon/en/
Registered Appellations of Origin
The LISBON EXPRESS database
The AO Bulletin
The Bulletin “Appellations of origin” is the
official publication of the Lisbon system. It is
issued by WIPO for the publication of new
registrations and other recordings in the
International Register as well as information
concerning changes in the legal framework
of the Lisbon system. In addition, the Bulletin
contains statistical information concerning
registered appellations of origin.
Example of an International Registration under Lisbon:
Huile d’Olive de la Vallée des Baux de Provence
(AO No. 806)
Registered on 29.06.98
Holder: Producers and groups of
producers enjoying the appellation
of origin in question
Area of Production: Delimited
territory within the department of
Bouches-du-Rhône
Legal Basis: Decree of August
27, 1997
Examples of Registered AOs under Lisbon
Interactive Lisbon World Map
THANK YOU
E-mail: [email protected]