The WIPO supposedly supports negotiations that uphold the principles of open participation so as to provide all the members of the organisation a fair opportunity to propose their arguments for or against the matter under negotiation – however The Diplomatic Conference for the Adoption of a New Act of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration that is currently underway at Geneva seems to be anything but representative of just that. Part I of this two part series seeks to understand the background to the Lisbon Agreement, and the legitimacy of the decision taken by the Lisbon system member nations as to exclude non-members from voting at the negotiation
Understanding the Lisbon Agreement
Countries across the world have set up special legislations offering a set of specific provisions aimed at preventing the misappropriation and unauthorised use of indications that are representative of originating from a particular geographic area, and accordingly identifiable with certain attributable features. These indications obviously deserve special protection, and while enforcing such protection within the territorial confines of a concerned nation may be quite a bit of a task, enforcing and ensuring similar protection across other countries is essentially, a whole other ball game – the root cause being the presence of conceptually different legal systems established for the protection of GIs in different territories, subject to the economic and legal environment and tradition of the concerned nations at the time.
The little known Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, thus, came to be adopted in 1958, entering into force on September 25, 1966 with a view of creating an international framework to protect “appellations of origin” as a special kind of GI in countries other than the country of origin through the creation of a registry of all the appellations of origin protected in the territories of the contracting parties to be administered by the International Bureau of WIPO. It was revised at Stockholm in 1967.
The agreement was established under Section 19 of the Paris Convention of Industrial Property. Any country party to the convention could accede to the agreement, and thereby become a member of the Lisbon Union Assembly. The strange part is that despite there being nearly 176 parties to the convention as of 2014, only 28 are signatories to the Lisbon Agreement – which is believed, has to do with its inconsistency with trademark systems of GI protection. Further, most of the 28 member nations have little or no appellations of origin registrations at all, with the exception of France with its 500 active registrations and Italy’s 100,
Article 2(1) of the Lisbon Agreement defines an “appellation of origin” as “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”.
The Lisbon Agreement further extends its protection to any “usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as “kind”, “type”, “make”, “imitation” or the like”.
The Agreement holds that each country remains free to adopt its chosen system for designation of its appellations of origin, and all such appellations protected through such a system in each individual member state becomes protected in all the other member states, and the products then cannot be deemed generic in the member states– except if any of the member states, within a period of one year, issues a refusal stating that it cannot assure protection with regard to a particular appellation.
Appellation of Origin under the Lisbon Agreement v. GI under the TRIPS Agreement
Article 22.1 of the TRIPS Agreement defines geographical indications as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin”, and appellations of origin are basically subsets of geographical indication.
A rather distinguishable factor that sets apart geographical indications as a broader concept, is that appellations of origin under the Lisbon Agreement comprises only and only geographical names of the concerned territory, while geographical indications can imply can imply any indication whatsoever pointing to the source of origin, including but not necessarily limited to the geographical name of the area concerned. So far as geographical indications are concerned, the TRIPS Agreement thus, expands to cover the scope defined in the Lisbon Agreement, making an appellation of origin only but a subset of a geographical indication.
Further, the name/symbol used as a geographical indication remains essentially attributable to its geographical origin, in contrast to appellations of origin where the focus remains centred on the features of the product possessed as a result of environmental factors – both human and natural.
The Revision of the Lisbon Agreement: Why all the hullabaloo?
The decision to revise the Lisbon Agreement to – extend the same protection offered to appellations of origin to geographical indications as well, and to make provisions to allow international governmental organisations like the European Union to accede to the agreement – largely stems from the WIPO’s realization of the need to make the Agreement more flexible and appealing so as to encourage other countries to join the Lisbon system and increase its member states from the current 28. The revised agreement is expected to involve, according to the EU :
- the refinement of its current legal framework, ensuring compatibility with the TRIPS Agreement;
- the inclusion of provisions specifying that the Lisbon System also applies in respect of geographical indications other than appellations of origin; and
- the inclusion of the possibility of accession by international organisations, such as the EU.
The important issues identified by the Preparatory Committee of the Conference appear to have been grouped under four main headings – issues concerning applications and international registration procedures; issues concerning provisions related to the scope of protection; issues concerning other provisions related to the legal effect of international registrations; issues concerning fees and the financing of the Lisbon System.
Rule 33 of the Agreement’s existing draft rules of procedure contain provisions only allowing for member states to vote. Special Delegations – the EU and OAPI – and observer states cannot themselves vote but can “exercise the rights to vote of the member states of the intergovernmental organisation which are represented at the diplomatic conference.”
This provision was the major bone of contention between non member states and member states of the Lisbon System (except Israel), fuelling heated debate in the days leading up to the start of the conference over whether countries like USA, Australia and others must be allowed to participate in the Conference currently underway at Geneva working to revise the Lisbon Agreement, considering that the changes proposed could have a significant economic impact on the economies of non member states as well by affecting their trade relations with countries that have acceded to the Lisbon Agreement.
The attempt to revise the provisions of the Lisbon Agreement comes at a time when the WTO’s Doha Round of negotiations on the creation of a multilateral register on wines and spirits under Article 23 of the TRIPS has reached a state of deadlock, and this appears to be a movement to re-engage in talks to deal with Geographical Indications under another forum, given the stalemate at the Doha negotiations currently. The member states of the Lisbon system currently include a significant number of European nations, and as mentioned earlier, the inclusion of GIs in addition to appellations of origin within its ambit of protection by disallowing the participation of other WIPO member at the Conference looks to be grossly unfair and without logical backing.
In its national statement, US Ambassador Pamela Hamamoto emphasized on the necessity for experts from all over the world equipped with the understanding of the multiple approaches to GI to put forth their views before a final decision is made, and emphasized on the need for full participation rights for all WIPO members.
She stated, “there is nothing in international law that excuses excluding the vast majority of WIPO members from what the Lisbon Agreement parties insist is a WIPO treaty negotiation. A small number of WIPO members should not be able to declare themselves to be more equal than others. If international rules provided such a justification, then why have WIPO members repeatedly chosen the opposite course – that of inclusiveness and participation? Why have they granted all WIPO members full participation rights even when they were not yet members of the treaty being updated…….Why is this issue any different? Why do GIs merit different treatment, but not copyright and trademarks??”
Where a decision could affect not only the trade of member states, but also negatively impact the imports and exports of non-members, it becomes pertinent that there is a global consensus on the issue, and it seems to me that all the WIPO members should have ideally been permitted to participate in the conference instead of simply making their voluntary submissions.
The ambassadors of 26 out of the 28 member nations of the Lisbon Agreement cited Section 39 and 40 of the Vienna Convention, and Article 13 of the Lisbon agreement “to emphasise that we are all bound by existing international law” so far as the participation of only treaty members was concerned.
It seems however, that neither of the mentioned provisions are imposing an express obligation on the member states to exclude non-members from voting at the conference. The call taken by the 26 member nations appears to be diametrically opposite to the general procedure of affairs with regard to WIPO discussions and negotiations, and the conference is the first closed door conference at WIPO in 20 years.
As the US stated, it appears to set a dangerous precedent so far as decision making in WIPO conferences is concerned.