Matteo Gragnani , 24 août 2010

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration was adopted in 1958 and revised in Stockholm in 1967. This treaty is administered by the World Intellectual Property Organization (WIPO). Currently, the Agreement has 27 contracting parties, seven of which are EU Member States (Bulgaria, Czech Republic, Hungary, France, Italy, Portugal and Slovakia). Article 2 of the Lisbon Agreement defines an appellation of origin as the geographical name 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. Thus, appellations of origin under the Lisbon Agreement would appear to be within the wider category of “Geographical Indications” as defined by article 22 of the TRIPS Agreement. Geographical Indications (GI) is also the common term referring to a variety of signs (appellations of origin, designations/denominations of origin, geographical indications) all used to identify and protect products with peculiar qualities due to the geographical origin. There are two basic conditions for an appellation of origin to be protected in the territories of all countries and parties of the Lisbon Agreement : on the firsthand, the appellation of origin should be recognized and protected as such in its country of origin, it should then be registered at the International Bureau of WIPO. Nonetheless, a contracting party may declare, within a period of one year from the receipt of the notification of registration, that it cannot ensure the protection of an appellation of origin whose registration has been notified to the International Bureau of WIPO (article 5.3). Regarding the implementation of the Agreement, the Lisbon system leaves considerable flexibility to its member states. In fact, the system is neutral towards the legal means each member country establishes to protect the appellations of origin of the other contracting parties. According to Rule 5(2) national protection can be ensured by virtue of legislative or administrative provisions, judicial decisions or registration. Therefore, the Lisbon Agreement shows a large capacity to accommodate a variety of national legal means such as those existing in the context of geographical indications. It must be highlighted that protection under the Lisbon Agreement is not limited to appellations of origin of agricultural products, foodstuffs and beverages (such as it is for the European Union legislation) but it is also extended to non-food products, handicrafts and industrial products (as it is in GI definition provided under article 22 of the TRIPS Agreement which uses the generic term “good” which is certainly not limited to agricultural-food products). According to article 3 of the Lisbon Agreement, protection is ensured against any usurpation or imitation, even if the true origin of the product is indicated or if the appellation is used in translated form or accompanied by terms such as "kind," "type," "make," "imitation," or the like. The aim of article 3 is to prevent use of a registered appellation of origin on a product of the same kind not originating from the area to which the appellation of origin refers to, or on a product of the same kind that, even though originating in the same area, does not meet the quality or characteristics on which protection for the appellation of origin is based. Accordingly, the level of protection provided by the Lisbon Agreement is relatively high. The Lisbon Agreement has, however, a limited membership. The main reasons are to be found in the limited knowledge of its advantages and in the need for improvements. In this regard, there is a renewed interest in the Lisbon Agreement as shown by the Working Group on the Development of the Lisbon system held on March 2009 at WIPO in Geneva. The Working group agreed that the International Bureau of the WIPO conduce a survey with the objective of ascertaining how the Lisbon system might be improved with the aim of making it more attractive for users and prospective new members while preserving its own core principles. Moreover, it was also agreed that the International Bureau would conduct a study on the relationship between regional systems for the protection of geographical indications and the Lisbon system and furthermore, examine the conditions for, and the possibility of, future accession to the Lisbon Agreement by competent intergovernmental organizations. (http://www.wipo.int/edocs/mdocs/mdocs/en/li_wg_dev_1/li_wg_dev_1_3.pdf).

This opportunity is extremely relevant for the European Union since the protection of geographical indications, both at domestic and international level, has always been a key issue for the EU. Even more, in a moment where WTO Doha negotiations for the extension of the additional protection to products other than wines and spirits and for the establishing of a multilateral register (under article 23 of the TRIPS Agreement) are not moving forward. The feasibility of the accession of the European Union to the Lisbon Agreement implies a number of questions.

At first, considering the external competences, the European Union seems entitled to access to the Lisbon Agreement. In fact, on the 1st December 2009 the Lisbon Treaty entered into force amending article 133 of the Treaty establishing the European Community which became article 207 of the Treaty on the Functioning of the European Union. The European Union gained exclusive competence to conclude an international agreement on the protection of the geographical indications, as it falls within the field of trade agreements relating to the commercial aspects of intellectual property. At present, the European Union has legislation for the protection of geographical indications for three categories of products : agricultural products and foodstuffs (EC Regulation 510/2006) wines (EC Regulation 479/2008) and spirits (EC Regulation 110/2008). As the Lisbon Agreement, the EU regulations also provide for sui generis systems (i.e. laws specifically aimed at protecting geographical indications which are based on registration). EU definitions of “Designation of Origin” (PDO) and “Geographical Indication” (PGI) (article 2 of EC Regulation 510/2006) substantially correspond to the Lisbon definition under article 2. Similarities are stronger as regards the Lisbon definition of “Appellation of Origin” and Community “Designation of Origin” : both are aimed at protecting products which have a strong link between their qualities and/or characteristics and their geographical origins, given that in both cases the quality or characteristics essentially or exclusively are due to the geographical environment. Compared to the Lisbon Appellation of Origin, Community PGI definition would appear to be wider as it requires a less restrictive link between geographical origins and characteristics of the product. Nonetheless, although a few differences in terminology, there does not seem to be any substantial incompatibility between EU and Lisbon definitions. As mentioned before, however, the EU does not have any legislation which aims to protect Geographical Indications for non-food products while the Lisbon Agreement requires its members to ensure protection also to such products. Therefore, in the event of the accession, in order to comply with its obligations under the Lisbon Agreement, the EU would probably have to adopt a specific GI legislation protecting handicrafts and industrial products. Another possibility could be for the EU to implement the Lisbon Agreement towards non-food products through the use of the Community collective mark which, under certain conditions, may be constituted by “signs or indications which may serve, in trade, to designate the geographical origin of the goods or services” (Article 66 of EC Regulation No 207/2009). At last, considering that the membership of the Lisbon Agreement is limited to states, in order to make feasible the EU accession, the intergovernmental organizations should be given beforehand the possibility to access the Agreement. The Lisbon Agreement could be amended taking as an example other international treaties administered by WIPO (e.g. the Hague Agreement Concerning the International Registration of Industrial Designs). In this prospect, the studies conducted by the International Bureau of WIPO should progress during the course of the next Working Group which will be held in Geneva from the 30th of August to the 3rd September 2010. Overall, from the EU point of view, the Lisbon Agreement could be seen for the international protection of the GI as an alternative to the TRIPS Agreement. In the meantime, the EU accession would allow the Lisbon agreement to largely increase the number of its members and put forward the accession of other interested intergovernmental organizations.

Reproduction autorisée avec indication : Matteo Gragnani, "The European Union and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration", www.ceje.ch, actualité du 17 août 2010.