The eighth session of the Working Group on the Development of the Lisbon system is taking place from 2-6 December. The working group is expected this week to advance work on a draft revision of the system, currently protecting appellations of origin.

WIPO Director General Francis Gurry said the working group was established in September 2008 by the Lisbon Union Assembly. The draft text from which delegates are going to work this week has three main aims, he said. Those are: refine and modernise the legal framework of the system established under the Lisbon Agreement, while preserving the principles and objectives of the agreement; ensure that the Lisbon system is applicable in respect of appellations of origin and geographical indications; and introduce provisions for possible accession by intergovernmental organisations.

Diplomatic Conference in Direct Line of Sight

During the latest WIPO General Assemblies held in September, the Lisbon Union Assembly approved the convening of a high-level negotiation (diplomatic conference) to finalise a revision of the Lisbon system (IPW, WIPO, 1 October 2013) in 2015.

This week, the Lisbon system members (currently 28) will have to work from a draft revision, and draft regulations.

Mihály Ficsor of Hungary was re-elected chair of the working group. He said the decision taken by the Lisbon system assembly in September shows that the activities of the working group have reached a crucial and decisive new state. The clear mandate of the working group, he said, is to prepare for a diplomatic conference to revise the Lisbon Agreement. The 9th session of the working group will be held in the first half of 2014, followed by a second session in the second half of 2014, if needed, he said.

The revision serves important goals, Ficsor explained, such as refining the current legal framework and attracting a wider membership. The revision will also extend the international register currently covering appellations of origins (AO) to geographical indications (GIs), and open the membership to competent international governmental organisations, he added. Such organisations could be the European Union and the African Organization for Intellectual Property (OAPI).

GIs are place names which identify characteristics such as the origin, quality and reputation of products. AOs are a particular kind of geographical indications, usually with stricter standards.

During the last session, Ficsor said, agreement was found on a single instrument covering AOs and GIs (IPW, WIPO, 3 May 2013). The objective of the week is to try and build consensus on as many issues as possible and reduce brackets in the draft text and regulations, he said.

Non-Members Voice Concerns

In several statements, countries which are not members of the Lisbon system raised concerns about the revised instrument. In particular, the US delegate said that delegations, such as the US, that protect geographical indications under a trademark system find it difficult to accept a treaty that does not accommodate such protection.

The US cannot join the Lisbon system because the treaty itself prevents them from joining, the delegate said. Because the Lisbon system revision now proposes to include GIs, the US delegate said “it is an entirely new treaty from our perspective.” The proposed revision, according to the US, is an expansion of scope and subject matter. “We are being asked to subsidise a system which we cannot join,” the delegate said.

She added that the US is coming to the working group to identify concerns with the revision and offer its expertise in one GI system which is not contemplated by the current proposed revision. Israel supported the US and Australia and also voiced concerns about the revision.

Australia, Canada, New Zealand and the US had already voiced criticism of the revision of the Lisbon system during the September Lisbon system Assembly. The US called the mandate of the working group into question and said that adding GIs to the Lisbon Agreement may prejudice current negotiations being held at the World Trade Organization.

During the last session of the WIPO Standing Committee on the Law of Trademark, Industrial Designs and Geographical Indications (SCT), from 4-8 November, the US also voiced its concerns about the revision of the Lisbon system. (IPW, WIPO, 11 November 2013). The US delegation submitted a new document to reopen discussions in the SCT about GIs, which had not been discussed in this committee for years.

The US proposed to explore the feasibility of a GI filing system administered by WIPO that would be neutral as to the type of GI system that a contracting party maintains at the national level. Among concerns, the US said it is not clear how a new right under the Lisbon Agreement would operate along with the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) GI obligations, or whether it might lead to conflicts between the two regimes.

Chair Says Mandate Clear

In response to the concerns raised by the US, and in particular in reference to the mandate of the working group, Ficsor said there is no doubt that AOs do qualify as GIs. The working group ensured that any revised system should remain neutral to all different ways of protecting GIS, he said.

As early as 2009, according to Ficsor, the mandate of the working group extended to GIs, and now the Lisbon system Assembly has approved the convening of a diplomatic conference on AOs and GIs. He thanked the US for raising specific issues in the draft revision and said he expects those issues will be discussed in the working group this week.

Another concern voiced by the US is the potential establishment of a dispute settlement mechanism within the Lisbon system. An information note on that question is on the table for discussion this week.