Brussels Briefing n. 31

Geography of food: reconnecting with origin in the food system

15th May 2013

http://brusselsbriefings.net

Existing global and regional legal frameworks for origin-branding and protecting geographical

indications and traditional products

Marie-Paule Rizo, WIPO

World Intellectual

Property Organization

Geographical Indications as Distinctive Signs for Collective Use: Developing Brands for Origin-Products

Marie-Paule RizoHead of Industrial Design and

Geographical Indication Law Section

Five multilateral treaties applicable to GIs:

WIPO: Paris Convention for the Protection of Industrial Property(1883)

Madrid Agreement on the Repression of False or Deceptive Indications of Source on Goods (1891)

Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (1958)

Madrid Agreement and Protocol for the International Registration of Marks (1891 and 1989)

WTO: TRIPS Agreement (1994)

International legal framework

The TRIPS Agreement

« Members should provide the legal means for interested parties to prevent:

the use of any means in the designation or presentation of a good that indicates or suggest that the good… originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good;

any use which constitutes an act of unfair competition… »

General standard of protection (Art. 22.2)

How to protect GIs?

Legislation on unfair competition

Collective or certification marks

Sui generis system

Administrative systems (labelling, etc.)

Different modes of protection can complement each other

ROQUEFORT (PDO)

Why protect GIs at the international level

Where do you market the products identified by the GI?

Territoriality principle in IP law

How to protect GIs at the international level?

Bilateral treaties

Regionally: EU, OAPI

Multilateral treaties

Madrid System for the International Registration of Marks

Lisbon Agreement for the International Registration of Appellations of Origin

Lisbon Union: 28 Member States(on July 4, 2013)

Africa (6)

Algeria

Burkina Faso

Congo

Gabon

Togo

Tunisia

Asia (4)

Georgia

Islamic Rep. of Iran

Israel

DPR of Korea

America (6)

Costa Rica

Cuba

Haiti

Mexico

Nicaragua

Peru

Europe (12)

Bosnia and Herzegovina

Bulgaria

Czech Rep.

France

Hungary

Italy

Moldova

Montenegro

Portugal

Serbia

Slovakia

The FYR of Macedonia

The Lisbon Agreement

France 509

Czech Rep. 76

Bulgaria 51

Italy 33

Hungary 28

Georgia 20

Cuba 19

Mexico 14

Peru 8

Algeria 7

Portugal 7

Tunisia 7

DPR of Korea 6

Slovakia 6

FYR of Macedonia 4

Serbia 3

Montenegro 2

Costa Rica 1

Israel 1

Moldova 1

908 registrations – 803 in force

Establishes an international register for appellations of origin and a procedure for their registration

Provides a definition of appellation of origin

(Art. 2(1)):

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

The Lisbon AgreementPrinciples

Flexibility:

in practice traditional appellations that have the “quality link” have been assimilated to appellations of origin: e.g.

MUSCADET (Nº 279, wine, France)

REBLOCHON (Nº 458, cheese, France)

VINHO VERDE (Nº 564, wine, Portugal)

The Lisbon AgreementPrinciples

Any sort of product may be designated by an AO:

- natural products (e.g. mineral water, marble)

Karlovarska Voda, Marble Lepenica

- manufactured products (e.g. crystalware, porcelain)

Joblonec, Herend

- agricultural, food and handicraft products

Fontina, Huile d’olive de Nyons, Bordeaux, Olinalá

The Lisbon Agreement

International

application

INTERNATIONALBUREAU

Records in the International RegisterPublishes in Bulletin Appellations of originNotifies other members

OTHER MEMBERS

examine

12 months

REFUSAL

12months

NO REFUSAL = protection

The Lisbon Agreement: General view of the procedure

country of origin Appellation protected as such

States that have not refused a notified AO within 12 months from receipt of the notification

must ensure protection of the appellation against usurpation or imitation, even if the true origin of the product is stated, or if the appellation is used in translated form or accompanied by a disclaimer or a delocalizer (“type”, “method”, “system”)

cannot deem that the appellation has become generic as long as it remains protected as an appellation of origin in its country of origin

The Lisbon Agreement

Effects of international registration

Term: Protection of the appellation of origin in each member country that has not refused protection continues without renewal as long as the appellation is protected as such in its country of origin

No renewal is required to maintain the international registration

The Lisbon Agreement

Single instrument covering AOs and Gis: two definitions

Single,high level of protection

Substantive provisions applicable to both

Accession Possibility for IGOs (e.g., EU)

Revision of the Lisbon System

Development of the Lisbon system

The work ahead:

Diplomatic Conference for the adoption of a revised Lisbon Agreement in 2015?

Rule 9(4)(x) of the Common Regulation expressly provides for registration of collective or certification marks

1247 collective or certification marks registered

500 in classes 29 to 33

Madrid System

Madrid Union

1 Agreement only34 Protocol only (including EU)55 Agreement and Protocol

90 Members

basic registrationPrecondition or

basic application

International

applicationOFFICE OF

ORIGIN

checks correspondence with the basic application/ registration

INTERNATIONAL BUREAU

checks formalitiesrecords in the International Registerpublishes in the International Gazettenotifies the designated Contracting Parties

OFFICE OF DESIGNATED

CPsubstantive examination

12/18 months

prov.refusal

12/18 months

no refusal = effect of a national registration

General Overview of the Procedure

Madrid System

NAPA VALLEY

Conclusion

Collective signs indicating geographical origin:

Multi-functionality

Potential

Readily available emotion

Emotion is the basis for reputation

Reputation needs stewardship

Reputation = Intangible Asset = (collective) Intellectual Property

Different concepts, different modes of protection

World Intellectual

Property Organization

THANK YOU!

Mariepaule.rizo@wipo.int