Quality Food Products Linked to Geographical Origin and Traditions

FAO Seminar for the South-Eastern European Countries

Lisbon System

Belgrade, December 3 and 4, 2008

Protection of
Geographical Indications
- international legal framework

Matthijs Geuze, WIPO

 Content of the Presentation
Lisbon System

• Global Overview of GI Protection Systems

• Subject-Matter of Protection
• Definitions
• Scope of Protection
• International Registration of GIs and AOs
• GIs in WIPO
Lisbon System

Global Overview of GI Protection Systems

 GI Protection Landscape
Lisbon System

Around the World

• Laws focusing on business practices

• Sui generis legislation
– concerning specifically defined characteristics of
the product or methods of their production
• Trademark law
• Other means of protection
Terminology Landscape
Lisbon System

indication of agricultural and food

appellation of origin
geographical origin product label

appellation d’origine agricultural and food

viticultural area
controlée product certificate

protected designation indication de

vin de pays
of origin provenance
protected
geographical denominación
geographical
designation específica
indication
geographical denominación de
indication of source
indication origen

quality wine produced

reserved description table wine
in a specified region
Scope of Protection Landscape

• Use of a recognized GI by • Use of a GI on products

Lisbon System

a person not eligible or which, while originating in

authorized to use it, the indicated area, do not
without any test as to the meet the production or
nature of that use product requirements on
• Use which is "false", which the use of the GI is
"incorrect", or "does not conditional
correspond to the place • Use damaging or
specified" exploiting the reputation,
• Use which might mislead, irrespective of whether
deceive or create a false the public is misled
impression regarding the • Acts contrary to "good
geographical origin of the practice" or "honest
products commercial practices“
• Misuse, imitation or • Conduct liable to mislead
evocation, even with or deceive the public
delocalising qualifiers • Non-authorized use of
reputation or goodwill
 Recognition and Protection of a GI
Lisbon System

• In the Country of Origin

• Abroad
 International Protection of GIs Recognized
and Protected in their Country of Origin
Lisbon System

• Paris Convention (1883)

• Madrid Agreement (1891)
(repression of false and deceptive indications)
• Madrid Agreement and Protocol (1891, 1989)
(international registration of marks)
• Lisbon Agreement (1958)
• Bilateral Agreements
• TRIPS Agreement (1994)
Lisbon System

Subject-Matter of Protection
 Geographical Indications
Lisbon System

- subject-matter of protection

Indication of a Connection between

Characteristics of Products and their
Geographical Origin

• typicality
• reputation
 GI Definition Landscape:
Lisbon System

- common denominators of the elements by which

definitions aim to capture the value-added of GIs

• Typicality
– quality or characteristics of a product that
make the product unique and which allow the
product to be identified geographically
• Reputation
– (1) degree of recognition by consumers of the
typicality of products and (2) the collective
goodwill that they represent on the market
 Basis and Justification for Protection
Lisbon System

• Quality or Characteristics
• Reputation
• Link between the Geographical Origin
and the Quality, Reputation or Other
Characteristics of the Product
 WIPO Standing Committee
Lisbon System

Document SCT/10/4, paragraphs 10-13

Quality

• legal criterion, allowing a product to be identified

• qualitative link different for GI than for AO ?
• disadvantage for countries whose GIs are
industrial products ?
• products derived from traditional knowledge ?
 WIPO Standing Committee
Lisbon System

Document SCT/10/4, paragraphs 27-30

Characteristics

• natural and human factors

– products derived from the “terroir”
– products derived from traditional knowledge (TK)
• any element that contributes to the typicality of
the product
 WIPO Standing Committee
Lisbon System

Document SCT/10/4, paragraphs 23-26

Reputation

• history of the product

• distinctive character of the product
• consumer’s perception
 WIPO Standing Committee
Lisbon System

Document SCT/10/4, paragraphs 31-36

Link with the geographical origin

• explains the relationship between the geographical area

where the product originates and its quality, reputation or
other characteristics
• critical element for determining the delimitation of the
geographical area

Some systems only require delimited zones to

differ in geological terms from others
Lisbon System

The TRIPS and Lisbon Definitions

 Definition
Lisbon System

- TRIPS

Geographical Indication
Indication which identifies 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
 Lisbon Agreement
Lisbon System

“Recognized” and “Protected” in the

Country of Origin (Article 1(2))

• a product with a certain reputation,

as defined in Article 2(2);
• whose appellation meets certain qualifications,
as defined in Article 2(1); and
• is protected by virtue of some formal means
(law, decree, judicial decision or registration)
 Lisbon Agreement
Lisbon System

- Definition of “Country of Origin” (Article 2(2))

Requirement of Reputation

The country whose name, or in which is situated

the region or locality whose name,
constitutes
the appellation of origin
which has given the product its reputation
 Lisbon Agreement
Lisbon System

- definition of required qualifications (Article 2(1))

Appellation of Origin

The geographical denomination

of a country, region, or locality, which serves to
designate a product originating therein,
of which the quality or characteristics are
due exclusively or essentially
to the geographical environment,
including natural and human factors
Lisbon System

Scope of Protection under TRIPS

 TRIPS Agreement: Scope of Protection
Lisbon System

• Incorporation of provisions • National treatment and

Paris Convention (Art.2.1) MFN (Article 3-5)
• Procedures (Article 62)
• Definition (Article 22.1) • Enforcement (Part III)
• Basic level of protection • Dispute settlement
(Article 22.2-4)
• Additional protection for wine
and spirit GIs (Article 23)

• Exceptions (Article 24.3-9)

• Negotiations (Article 24.1)
 Standards of Protection
(Article 22.2-4)
Lisbon System

Any GI shall be protected against …

• Any use in the designation or presentation of a good

which misleads the public as to its geographical origin

• Any use which constitutes an act of unfair competition

within the meaning of Art.10bis of the Paris Convention

• Registration of trademarks which can mislead the public

as to the geographical origin of products

• Deceptive geographical indications

 Standards of Protection
(Article 23)
Lisbon System

GIs for wines or spirits shall benefit from additional

protection against ...

• Any use of the GI which identifies a wine or a spirit

not originating in the area indicated
• Country allowed to opt for enforcement by
administrative action only

• Registration of trademarks
not having the geographical origin indicated

• Homonymous GIs (for wines)

 Exceptions
Lisbon System

• Generics
(Article 24.6)
• Use of One’s Own
Name in Business
• Prior Trademark Rights (Article 24.8)
(Article 24.5)
• GI Not Protected in
Country of Origin
• Other Prior Use (Article 24.9)
(Article 24.4)
 WTO Dispute Settlement
- Panel Report on GI Issues
Lisbon System

Two cases concerning EC Regulation 2081/92

• US vs EC (wt/ds174)
• Australia vs EC (wt/ds290)
Lisbon System

Scope of Protection under Lisbon

 Lisbon Agreement: Scope of Protection (1)
Lisbon System

Usurpation
Protection shall be ensured against 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 “type”, etc.

Records Lisbon Conference 1958, p.815

Infringement of the exclusive rights of the holders of the
right to use the appellation through unlawful
appropriation – in certain legislations called usurpation
or counterfeiting – or fraudulent imitation
 Lisbon Agreement: Scope of Protection (2)
Lisbon System

Unfair Competition - Article 4 Lisbon

Confirms the protection that may already exist in a
member country by virtue of other international
instruments, national law or court decisions

Records Lisbon Conference 1958, p.816

Apart from usurpation or counterfeiting, there are a
whole range of acts that may qualify as acts of unfair
competition and are to be prohibited
Lisbon System

International Registration of GIs and AOs

Lisbon System

International Registration of GIs

Negotiations in the WTO

 TRIPS Agreement
Lisbon System

Article 23.4

In order to facilitate the protection of GIs for

wines, negotiations shall be undertaken in the
Council for TRIPS concerning the
establishment of a multilateral system of
notification and registration of GIs for wines
eligible for protection in those Members
participating in the system.

(Spirits added by the Doha Ministerial)

Lisbon System

International Registration of GIs

The Existing Systems:

Lisbon and Madrid
Lisbon System

Lisbon and Madrid

applicable in respect of all categories

of products
 26 Member States
Lisbon System

Africa (6): Algeria, Burkina Faso, Congo,

Gabon, Togo, Tunisia
America (6): Costa Rica, Cuba, Haiti, Mexico,
Nicaragua, Peru
Asia (4): Georgia, Islamic Rep. of Iran,
Israel, DPR of Korea
Europe (10): Bulgaria, Czech Rep., France,
Hungary, Italy, Moldova,
Montenegro, Portugal,
Serbia, Slovakia
 Renewed Interest in Lisbon
Lisbon System

• Increase in Membership since 1997

• Assembly established Working Group

– to explore possible improvements to the

procedures under the Lisbon Agreement
– first meeting: March 17 to 20, 2008
Madrid Union
84 members
Lisbon System

Agreement only 6
Protocol only 28 (Including EC)
Agreement and Protocol 50
 Legal Effect
Lisbon System

Effect of international registration

– extension of protection to countries other than the
country of origin
– indefinite (in principle)

Except in a country that ...

– issued a refusal (within the prescribed time-limit), or
– invalidated the effect of the international registration
in its territory
Lisbon System
Lisbon System
Lisbon System
Lisbon System
Lisbon System
 Lisbon: 885 registrations - 811 in force
Lisbon System

• France 508 • Algeria 7

• Czech Rep. 76 • Portugal 7
• Bulgaria 51 • Tunisia 7
• Slovakia 37 • DPR of Korea 4
• Hungary 28 • Peru 4
• Italy 28 • Montenegro 2
• Georgia 20 • Moldova 1
• Cuba 19 • Israel 1
• Mexico 11
 Effect of Lisbon registration
Lisbon System

Records Lisbon Conference 1958, p.816-818

– Other countries will know the precise appellation to

be protected
– These countries will be required to take position with
regard to the appellation
– They may refuse protection but, if they don’t, they
should, in principle, prevent the appellation from
becoming generic

Rule 16 Lisbon Regulations

– Procedure for notification of invalidation

 Effect of a refusal
Lisbon System

Article 5(3)
• The competent authority is entitled to declare,
within a time-limit of one year, that protection
cannot be ensured
• Requirement to indicate the grounds for such a
refusal

Records Lisbon Conference 1958, p.817

• Refusal can be based on any situation of fact or
law preventing the grant of protection
• The grounds for refusal constitute the basis for
negotiating a possible understanding
Lisbon System
Lisbon System
Lisbon System
Lisbon System
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 GIs in WIPO
Lisbon System

• International Registration
• Technical Assistance to Member States
• Protection of Traditional Knowledge
• Symposia
• Standing Committee on the Law of TMs,
IDs and GIs
• Arbitration (Domain Names)
Lisbon System

THANK YOU

Matthijs Geuze
WIPO