LISBON AGREEMENT

P. ILANANGAIPATENT DEPARTMENT

Altacit Global

Email: info@altacit.com Website: www.altacit.com

Lisbon Agreement

• The Lisbon Agreement is a special Agreement under Article 19 of the Paris Convention for the Protection of Industrial Property. Any country party to the Convention may accede to the Agreement.

• WIPO administers the Lisbon System which was established under the 1958 Lisbon Agreement for the protection of a special category of such geographical indications, i.e. “Appellations of Origin” (AO) and their International registration to facilitate the international protection of AOs. contd….

• International protection for identifiers of typical products from a defined geographical area.

• The Lisbon Agreement entered into force on September 25, 1966. It was revised at Stockholm in 1967 and was amended in 1979.

• In many countries, unfair competition or consumer protection laws contain general provisions dealing with the misappropriation of indications serving to designate products that originate in a geographical area. 

• Securing protection for such indications in other countries has, however, been complicated due to differences in legal concepts existing from country to country. 

contd….

Objective of the Lisbon System

• The Lisbon Agreement was concluded in response to the need for an International system that would facilitate the protection of “appellations of origin”, in countries other than the country of origin, by means of their registration at the International Bureau of WIPO through a single procedure, for a minimum of formalities and expense.

• A special kind of geographical indication. • A geographical name or a traditional

designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced.

• e.g. Cuban cigars, Kashmiri shawls etc. • The concept of appellation of origin is

encompassed by the concept of geographical indication.

Appellation of Origin under the Lisbon System

• A geographical indication is a sign used on goods that have a specific geographical origin and possess qualities that are essentially attributable to that place of origin.

• India, as a member of the World Trade Organization (WTO), enacted the Geographical Indications of Goods (Registration & Protection) Act, 1999 and has come into force with effect from 15th September 2003.

• Examples: 

Geographical Indication

• Unfair Competition• Trademark Law• Certification Mark Law• Local Registration• International Registration

(Treaties)

Protection of Geographical Indications

• Paris Convention for the Protection of Industrial Property of 1883.

• The Lisbon Agreement for the Protection of Appellations of Origin and Their International Registration.

• Articles 22 to 24 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

Protection on the International level

• Geographical indication is a notice, which tells that, a given product originates in a certain geographical area. While appellation of origin is a specific type of geographical indication, which ascertains certain qualities, which are due essentially or exclusively to its place of origin, or may be because of peculiar conditions. It excludes ‘reputation’ of the goods as essentially attributable to the geographical origin.

• Consequently, goods having a certain ‘reputation’ but no quality/characteristics attributable to their geographical origin would remain outside the scope of protection as ‘appellations of origin’ but may qualify for protection as GIs.

• Therefore the major difference between an AO and a GI rests with the type of link that exists between the qualities or characteristics of the product and the natural environment from which they originate. This link is stricter for appellations of origin than for geographical indications.

Difference between Geographical Indication and

Appellation of Origin

• Article 1(2) of the Lisbon Agreement lays down that, in order to qualify for registration at the International Bureau of WIPO, an “appellation of origin” must be “recognized” and “protected” in the “country of origin”. 

• Article 2(1) defines “appellation of origin” 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”. 

• Article 2(2) defines the “country of origin” as “the country whose name or the country in which is situated the region or locality whose name constitutes the appellation of origin that has given the product its reputation”.

Recognition and Protection in the Country

of Origin

• The producers: The appellation helps producers obtain good prices for their products.

• The consumers: Appellations of origin provide guarantees to consumers with respect to production methods and quality.

• Economic development: Appellations of origin are tools for the development and promotion of regions and countries.

Benefits

• International Registration: • File an application for international registration

under the Lisbon Agreement. • Any natural person or legal entity, public or

private, having, according to their national legislation, a right to use such appellation.

• The International Bureau then notifies the competent Offices of the other Contracting Parties to the Lisbon Agreement of any new international registration of an appellation of origin.

• Fee: International registration is subject to payment of a single 500 Swiss francs fee.

contd….

Protection of Appellations of Origin

• Term of Protection: The international registration of an appellation of origin ensures the protection of that appellation without renewal, for as long as it is protected in the country of origin.

• Scope of Protection: A registered appellation may not be presumed to have become generic in a contracting state as long as it continues to be protected in the country of origin. In addition, the other contracting states are under the obligation to provide a means of defense against any usurpation or imitation of an internationally protected appellation of origin in their territory.

Effects of Registration

• Subject to refusal or invalidation, an appellation of origin which has been the subject of an international registration is to be ensured protection from the date of the international registration in each contracting country which has not issued a refusal. However, a contracting country may declare that protection is ensured in that country from a different date, which may not be later than the date of expiry of the one-year refusal period.

• The international registration of an appellation of origin assures it of protection, without any need for renewal, for as long as the appellation is protected in the country of origin.

contd…

• Rights to refuse:• However, the competent authorities of the

member countries that have received notice of the registration of an appellation of origin have the right to refuse to protect it in their territory.  Such a refusal of protection has to be the subject of a declaration to that effect, which has to meet two requirements: 

• (i) Time requirement:  The refusal has to be notified to the International Bureau within a period of one year from the date of receipt by that country of the notice of registration. 

• (ii) Requirement regarding content:  The declaration of refusal has to specify the grounds for refusal. 

(a) The appellation has already acquired a generic character in its territory in relation to the product to which it refers

(b) The geographical designation does not conform to the definition of an appellation of origin in the Lisbon Agreement

(c) The appellation would conflict with a trademark or other right already protected in the country concerned. 

• Withdrawal of the declaration of refusal recorded in the International Register.

Present Status of the Lisbon System

• The Lisbon Agreement currently has 27 member countries.  Since its entry into force in 1966, 898 appellations of origin were recorded in the International Register, of which 793 are currently in force.

• CONTRACTING PARTIES Algeria, Bulgaria, Burkina Faso, Congo, Costa

Rica, Cuba, Czech Republic, Democratic People's Republic of Korea, France, Gabon, Georgia, Haiti, Hungary, Iran (Islamic Republic of), Israel, Italy, Mexico, Montenegro, Nicaragua, Peru, Portugal, Republic of Moldova, Serbia, Slovakia, The former Yugoslav Republic of Macedonia, Togo, Tunisia.

Lisbon Express

• The “Lisbon Express” database allows for a search on appellations of origin as registered under the Lisbon Agreement, the product to which they apply, their area of production, the holders of the right to use the appellation of origin, any refusals or invalidations notified by member countries, etc. It is available on the WIPO website at http ://www.wipo.int/ipdl/en/ lisbon/search-struct.jsp

• Examples of Appellations of Origin Registered under the Lisbon Agreement Registered as Domain Names

• Appellation of Origin: Ajaccio Product: wine Country holding the Appellation of Origin: France Domain Name: ajaccio.org Domain Name Holder: Frigara Country of Domain Name Holder: France

• Tequila(No. 669) Product : Spirit Holder : Government of Mexico Area of Production : Territory of the

area of Jalisco• Chulucanas (No. 869) Product : Ceramics Holder : The Peruvian State Area of production : District of

Chulucanas, in the province of Morropón, department of Piura.

Conclusion

India has a comprehensive sui generis GI legislation but that should not be limiting factor in becoming a party to the Lisbon Agreement which would open the gates for the unlimited and varied agricultural products to be internationally registered as appellations of origin and attaining international recognition and significance.

THANK YOU