Transcript CHALLENGES TO THE LISBON SYSTEM Presentation by Mihály Ficsor, Vice-President, Hungarian Patent Office WIPO/INPI Forum on Geographical Indications and Appellations of Origin Lisbon, October 30 and.

CHALLENGES TO THE LISBON SYSTEM
Presentation by
Mihály Ficsor,
Vice-President, Hungarian Patent Office
WIPO/INPI Forum on Geographical Indications and
Appellations of Origin
Lisbon, October 30 and 31, 2008
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I. INTRODUCTION
Main challenges:
– divergent approaches, variety of concepts
– changes to the international environment
– need for flexible interpretation
– settlement of disputes
– coexisting appellations
– development into an autonomous system with a wider
geographical coverage
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I. INTRODUCTION
Bits of WIPO history:
– 1974-1975: preparations for a new treaty in a Committee of
Experts
– 1970s-1980s: efforts to revise the Paris Convention
– 1990: Committee of Experts – discussions about a new treaty
on the protection of GIs
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II. BUILDING ON SAND?
No uniform approach:
– sui generis protection
– trademark law
– unfair competition (passing off)
Terminology - tower of Babel:
– ”indication of source” (Madrid Agreement, Paris Convention)
– ”appellation of origin” (Lisbon Agreement)
– ”geographical indication” (TRIPS Agreement)
– ”geographical indication (and designation of origin)” (EU
Regulations)
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III. FITTING IN WITH THE CHANGING
INTERNATIONAL ENVIRONMENT
Compatibility of the Lisbon Agreement with the TRIPS
Agreement:
– what is a name?
– quality, characteristics, reputation
– exceptions under Article 24 TRIPS
– optional exceptions: Articles 24.4, 24.6, 24.7 and 24.9
– mandatory exceptions: Articles 24.5 and 24.8
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III. FITTING IN WITH THE CHANGING
INTERNATIONAL ENVIRONMENT
Recent enlargements of the European Union:
– specific problems related to transitional arrangements
– appellations of origin of third countries protected under the
Lisbon Agreement in the new EU Member States
– protection of appellations of origin from new EU Member States
under the Lisbon Agreement
– rethinking the relationship between the EU’s acquis
communautaire and the Lisbon system
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IV. GETTING LISBON RIGHT
Proper understanding of the Lisbon system:
– not limited to what you can eat or drink
– neutral to the type of protection
– exploring the full potential of Article 4 of the Agreement
– more careful reading of Article 6 of the Agreement
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V. SETTLEMENT OF DISPUTES UNDER THE
LISBON AGREEMENT
Settlement of disputes:
– Article (5) of the Agreement: remedies for the”interested party”
– possibility of inter-state conflicts
– need for efficient dispute settlement between contracting
countries
– proposals for dispute settlement in the TRIPS Council under
Article 23.4 TRIPS
– special arbitration, binding decisions with erga omnes effects
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VI. WHEN TWO IS TOO MANY
Coexisting and/or homonymous appellations:
– introducing a statement of grant of protection into the
Lisbon system
– now to define homonyms?
– the case of trans-border geographical units
– international applications jointly presented by two or more
countries of origin
– “false” and “true” homonyms
– special treatment of homonyms: only for GIs
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VII. SOME OTHER CHALLENGES
Other challenges:
– widening the geographical scope of the Lisbon system
– further working languages?
– common ground for regional groups in WIPO
– meeting the special needs of developing countries
– more extended use of e-business tools
– an autonomous system
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Thank you for your attention!
www.hpo.hu
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