[A2k] Bridges Weekly: Diplomatic Conference to Revise Lisbon Agreement Set as WIPO Members Spar over Participation

Thiru Balasubramaniam thiru at keionline.org
Thu Nov 6 06:50:05 PST 2014


BRIDGES <http://www.ictsd.org/bridges-news/Bridges>
Diplomatic Conference to Revise Lisbon Agreement Set as WIPO Members Spar
over Participation
6 November 2014

Parties to the Lisbon Agreement protecting “appellations of origin” are now
set to hold a diplomatic conference next May at the World Intellectual
Property Organization’s (WIPO) headquarters in Geneva, Switzerland. Last
week’s decision confirming such a conference, however, fuelled heated
debate over whether countries not party to the treaty should be allowed to
vote on revisions adding geographical indications to its scope, given the
impact these changes could have on their own commercial and trading

The diplomatic conference to revise the Lisbon Agreement for the Protection
of Appellations of Origin and their International Registration, as the
agreement is known, is now scheduled to be held from 11-21 May of next year.

The decision was confirmed after a meeting last week of a Preparatory
Committee tasked with advancing the preparations for the conference, held
as part of a larger meeting of the Working Group (WG) that has been
discussing the potential Lisbon revisions.

Diplomatic conferences are the highest level of negotiations at the UN
intellectual property agency, which counts 188 countries as members. The
Lisbon Agreement, however, has just 28 contracting parties from this group,
spanning across Africa, Latin America, Asia, and Europe.

The 28 members are Algeria, Bosnia and Herzegovina, Bulgaria, Burkina Faso,
Czech Republic, Congo, Costa Rica, Cuba, France, Gabon, Georgia, Haiti,
Hungary, Iran, Israel, Italy, Macedonia, Mexico, Moldova, Montenegro,
Nicaragua, North Korea, Peru, Portugal, Serbia, Slovakia, Togo, and Tunisia.

*Appellations of origin*

The current Lisbon Agreement was adopted in 1958, and entered into force
eight years later in September 1966. The agreement – including the
associated international registry – is administered by WIPO’s International

The version in force covers appellations of origin (AOs), which is a
special type of geographical indication (GI). These AOs are described
in Article
2 <http://www.wipo.int/treaties/en/text.jsp?file_id=285856#article2> of the
Lisbon Agreement 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.”

Geographical indications, by way of comparison, are broader and have a
weaker link to the geographic environment of origin. Article 22 of the
WTO’s Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS) defines GIs 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.”

Under Lisbon, a contracting party may register with the International
Bureau AOs that are “recognised and protected
<http://www.wipo.int/treaties/en/text.jsp?file_id=285856#article1> as such
in the country of origin,” with that AO then protected against “any
usurpation or imitation.” This single registration would then apply to all
contracting parties.

Furthermore, that article explains, the country of origin is that “whose
name, or the country in which is situated the region or locality whose
name” is used as the AO, thus imparting its reputation on the product.
Common examples of appellations of origin include tequila and
Parmigiano-Reggiano cheese.

The agreement also ensures that protected AOs cannot then be deemed generic
<http://www.wipo.int/treaties/en/text.jsp?file_id=285856#article6> in a
Lisbon contracting party. Once an appellation of origin is registered,
fellow Lisbon members must protect it in their countries. They do, however,
have the option of saying that they cannot guarantee the AO within one year
of that appellation being registered, as long as they alert the
International Bureau and explain the grounds for that decision.

To date, there have been over 900 registrations of appellations of origin
under Lisbon, with over 800 currently in force, according to WIPO
The overwhelming bulk of them have been registered by France, which has
listed over 500.

*Six year process*

In 2008 <http://www.wipo.int/lisbon/en/general/>, a Working Group was
established aimed at examining ways to improve Lisbon System procedures,
with the goal of drawing in new members and also making it “more attractive
to states and users, while preserving the principles and objectives of the
Lisbon Agreement.” A year later, the Working Group was given the mandate
<http://www.wipo.int/edocs/mdocs/govbody/en/li_a_25/li_a_25_2.pdf> to begin
a full review of system.

The draft revisions set to go before the diplomatic conference in May would
change the subject matter covered by the Lisbon registry to include GIs,
and not just AOs.

It would also include accession criteria for international organisations –
making it easier, for instance, for the 17-country African Intellectual
Property Organization (OAPI, by its acronym in French) or the full European
Union to join as a group.

While several EU member states are contracting parties to the existing
Lisbon treaty, various others are not.

The movement to revise the Lisbon Agreement comes as separate efforts at
the WTO on creating a multilateral register on GIs for wine and spirits
remain stalled, particularly amid the broader impasse in the global trade
body’s Doha Round negotiations. Many observers such as KEI have viewed
<http://keionline.org/node/1977> the renewed push to revise the Lisbon
treaty as an effort to deal with GIs under another forum, given the slow
pace of the WTO talks. Those latter discussions have been occurring under
the umbrella of the TRIPS Special Session.

Honduran Ambassador to the WTO Dacio Castillo recently told
<http://www.wto.org/english/news_e/news14_e/tnc_stat_16oct14_e.htm> a
meeting of the WTO’s Trade Negotiations Committee that the state of
discussions within the TRIPS Council Special Session “has not improved” in
recent months. “The substantive positions of Members have not changed and
the appetite of delegations to engage in constructive work on the GI
Register negotiations remains limited within the current overall
negotiation framework,” he said.

*Participation questions spark controversy*

The decision to move ahead with the diplomatic conference without extending
a vote on the Lisbon revisions to all WIPO members – including  non-parties
to Lisbon – has fuelled controversy over both the extension of the System
itself to GIs, as well as who should be involved in voting on these changes.

Under the existing draft rules of procedure
<http://www.wipo.int/edocs/mdocs/mdocs/en/li_r_pm/li_r_pm_2.pdf> for the
diplomatic conference, Lisbon parties may vote, but other WIPO members may
not, though they may attend as observers. Notably, special delegations –
namely the EU and OAPI, as intergovernmental organisations – may not vote
themselves, but they can “exercise the rights to vote of the member states
of the intergovernmental organisation which are represented at the
diplomatic conference.”

Various non-members of the Lisbon Agreement, led by the United States, have
argued that they should also be allowed to vote at the May diplomatic
conference, given that an extension of the pact to include geographical
indications would inevitably affect their trade relations with Lisbon

To that end, a group of countries – including Israel, a Lisbon contracting
party – submitted a draft proposal
<http://www.wipo.int/edocs/mdocs/mdocs/en/li_r_pm/li_r_pm_5_rev_2.pdf> to
last week’s Preparatory Committee meeting suggesting that the draft rules
of procedure for the diplomatic conference be revised in order to invite
all WIPO members to the May conference, “with the right to vote.”

“WIPO Diplomatic Conferences are normally open for full participation and
voting by all WIPO Members,” the proposal says. “However, the current draft
of document LI/R/PM/2 proposes a closed model, limiting full participation
and voting rights to only current Lisbon Members.”

The proposal was backed by Argentina, Australia, Canada, Chile, Israel,
Japan, New Zealand, Panama, South Korea, Singapore, the US, and Uruguay,
according to the latest version on WIPO’s website.

“The revised Lisbon Agreement is much more than a mere technical revision,”
said Pamela Hamamoto, the US’ Permanent Representative to the UN and other
international organisations in Geneva, in her opening remarks
last week’s meeting, arguing that normal WIPO rules of procedure for new
treaties should apply.

Citing the commercial and trade implications that international norms in
this field will have on all countries, the US ambassador stressed that
current Lisbon Parties, which she noted make up less than a quarter of
WIPO’s overall membership, “should not be allowed to dictate an outcome
that will inevitably affect all of us.”

However, a decision was confirmed after last week’s preparatory committee
meeting to continue with current draft rules of procedure, and not expand
voting rights to all WIPO members. The chair’s report
<http://www.wipo.int/edocs/mdocs/mdocs/en/li_r_pm/li_r_pm_6.pdf>noted that
“the Preparatory Committee, with the exception of one Member of the Lisbon
Union, agree to transmit the draft Rules of Procedure of the Diplomatic
Conference… to the Diplomatic Conference and agreed to recommend them for
adoption at the Diplomatic Conference Meeting in Plenary.”

Sources say that the fact that one member state was not in agreement with
the draft rules of procedure – as noted by the chair – has raised questions
among some countries about whether there was indeed consensus to move
forward with the draft rules of procedure, particularly since a vote was
also not apparently taken.

While WIPO rules
<http://www.wipo.int/edocs/pubdocs/en/general/399/wipo_pub_399.html> allow
for decisions to be taken by a vote of simple majority, the organisation
has traditionally operated on the principle of consensus.

“We take the discussions from yesterday and today as an unequivocal signal
that whatever inclusiveness we have enjoyed during the WG meetings is no
longer realistically possible,” said US Deputy Permanent Representative
Peter Mulrean in his closing remarks, according to a transcript
by his office.

“We simply do not understand how the Lisbon Union went from no consensus to
an agreement on the rules of procedure, with no procedural steps in
between,” the US official said.

According to sources familiar with the meetings, some of the Lisbon parties
that spoke last week said that since the outcome of the amendment will be
binding only on those who are part of the Lisbon Agreement, then those are
the countries who should be making the actual decision.

ICTSD reporting; “Preparations Begin for Lisbon Revision At WIPO;
Procedural Question Raised,” IP-WATCH, 15 October 2014; “Draft Revision To
Provide Higher Protection To GIs Fine-Tuned at WIPO,” IP-WATCH, 28 October
2014; “Lisbon GI Revision A Hot Topic As Members Prepare for Treaty Talks,”
IP-WATCH, 26 September 2014.

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