GEOGRAPHICAL INDICATIONS

International protection for Geographical Indications is becoming a priority in a world market hungry for origin-based quality products: US producers show an interest in the possibilities offered by the Lisbon Agreement’s new version.

The world markets’ growing appetite for origin-based quality products (Chianti wine or Parmigiano-Reggiano cheese, to name a couple of Italian examples) mean that more of these products need to be protected from fakes, look-alikes and other frauds.

Countries that do not have specific legislation concerning the protection for the names of origin-based quality products are therefore starting to show an interest in the new version of the international treaty administered by the World Intellectual Property Organisation, called The Lisbon Agreement on Appellations of Origin and Geographical Indications (the Lisbon Agreement).

The Lisbon Agreement facilitates the international protection of Appellations of Origin (AOs) and Geographical Indications (GIs). An updated version of this agreement, known as the Geneva Act of the Lisbon Agreement, was adopted on 20 May 2015.

The essential changes introduced by the Geneva Act are:

• flexibility about how countries may provide protection for AOs and GIs, including through trademark system if no AO or GI system is in place

• safeguards for prior trademark rights and other prior rights such as personal names, plant varieties or animal breed denominations

• possibility to challenge or invalidate the effect of an international registration in single jurisdictions within the Lisbon system

• accession to the Geneva Act is open to international organisations competent for GI protection (e.g. European Union and African Intellectual Property Organization)

• new definition of AOs and GIs and of their scope of protection

• countries may request payment of an individual fee

• grant of protection will be notified.

The changes are designed specifically to attract new members to the Lisbon Agreement, notably those states that have now specific legislation on GIs.

One of such countries is the United States, whose representative at the WIPO diplomatic conference on the Geneva Act of the Lisbon Agreement, however, criticised the adoption and indeed expressed concern both about the act’s content and its approval process.

Nonetheless last week, according to this press release, the American Origin Products Association (AOP), representing about 6,000 US producers, expressed a strong interest in the new version of the Lisbon Agreement as a means to reduce the costs that its members must bear to protect their GIs.

The AOP’s reasoning is flawless: origin-based producers are often small enterprises lacking the resources to protect their own trademarks. GIs can be registered and managed by producer organisations and used by single producers at a fraction of the cost of an individual registration.

But can the AOP’s expression of interest be taken as an early sign that the United States might actually consider becoming a member of the Lisbon Agreement? Time will tell.