What's in a name? Geographical indications stir the pot at WIPO trademark committee

Protection for geographical indications is an issue that divides the generally united front that Australia, Canada, the European Union, Japan, Switzerland, New Zealand and the United States maintain at WIPO and WTO negotiations on setting rules for the enforcement of patents, copyright, trademarks and industrial designs. In a 12 March 2014 piece, Europe wants its Parmesan back, seeks name change, the Associated Press reported that,

As part of trade talks, the European Union wants to ban the use of European names like Parmesan, feta and Gorgonzola on cheese made in the United States.

The WIPO trademark committee (more formally known as the Standing Committee on the Law of Trademarks, Industrial Designs and Geographical Indications, SCT) met from 17-21 March 2014. Although discussions on the proposed Design Law Treaty dominated this meeting, this piece endeavors to provide background to the proposal (SCT/31/7) tabled by the United States on a Work Plan for Exploring the Feasibility of a Geographical Indications Filing System in the context of recent developments in the Special Union for the Protection of Appellations of Origin and their International Registration (Lisbon Union), the WTO TRIPS Council and the nascent Transatlantic Trade and Investment Partnership (TTIP).

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (http://www.wipo.int/treaties/en/text.jsp?file_id=285856) is a little-known agreement, that in the words of the International Bureau, "offers a means of obtaining protection for an appellation of origin AO) in the contracting parties to the Lisbon Agreement through a single registration." The 28 signatories to the Lisbon Agreement count amount their members: Algeria, Bosnia and Herzogovina, Bulgaria, Burkina Faso, Congo, Costa Rica, Czech Republic, Democratic People's Republic of Korea, France, Gabon, Georgia, Haiti, Hungary, Islamic Republic of Iran, Israel, Italy, Mexico, Montenegro, Morocco, Nicaragua, Peru, Portugal, Republic of Moldova, Serbia, Slovakia, the former Yugoslav Republic of Macedonia, Togo and Tunisia.

In recent years, the Lisbon Union has convened 8 sessions of the Working Group on the Development of the Lisbon System (Appellations of Origin) to revise the Lisbon System to include geographical indications (in addition to appellations of origin) and to create an international register for geographical indications and appellations of origin. This group has been chaired by, Mihály Zoltan Ficsor. Vice President of the Hungarian IP Office, and son of Mihály Ficsor, the well-known copyright expert and former WIPO DDG).

According to document LI/WG/DEV/8/2 (Draft Revised Lisbon Agreement on Appellations of Origin and Geographical Indications), the Lisbon Working Group is

reviewing the international system of the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (hereinafter referred to as “the Lisbon Agreement”) with a view to improving the Lisbon system so that it might attract a wider membership, while preserving the principles and objectives of the Lisbon Agreement. On this basis, the Working Group is working towards a revision of the Lisbon Agreement that would involve: (i) the refinement of its current legal framework; (ii) the inclusion of provisions ensuring that the Lisbon system also applies in respect of geographical indications; and (iii) the inclusion of the possibility of accession by intergovernmental organizations.

In the chapeau (prepared by the WIPO secretariat) to the Draft Revised Lisbon Agreement, the International Bureau noted that the Lisbon Working group "agreed that a recommendation be made to the Assembly of the Lisbon Union to approve, at its session in 2013, the convening of a Diplomatic Conference for the Adoption of a Revised Lisbon Agreement on Appellations of Origin and Geographical Indications in 2015, with the exact dates and venue to be decided by a preparatory committee meeting."

Given that the question of creating a multilateral system for the registration of geographical indications for wines and spirits has dogged the WTO since 1997, the Lisbon Union's gambit in creating an international register for geographical indications under the auspices of WIPO represents a cunning strategy of norm-setting and forum shifting by a coalition of the willing. In a meeting with NGOs on 25 March 2014, WIPO Director-General Francis Gurry specifically identified the creation of the Lisbon Union's international register for geographical indications as one of four key normative processes undertaken at WIPO (along with the Design Law Treaty, the Broadcasting Treaty and the IGC process to negotiate international legally binding instrument/instruments to protect traditional cultural expressions (folklore), traditional knowledge and genetic resources).

In response to developments at the Lisbon Union and the Lisbon Working Group (chaired by Mihály Ficsor), the United States submitted a proposal to SCT31 on a "Work Plan for Exploring the Feasibility of a Geographical Indications Filing System". In its submission, the United States contended that the Lisbon Union had overreached its mandate by seeking to set global norms on geographical indications through the revision of the Lisbon Agreement. The United States noted,

As a dedicated member of the World Intellectual Property Organization (WIPO) and a believer in its fundamental objectives and rules, the delegation of the United States of America is troubled by the process the Lisbon Union has followed to “revise” the Lisbon Agreement on the International Registration of Appellations of Origin. This process essentially has sought to transform an agreement with limited membership and narrow subject matter into new global intellectual property agreement with a fundamentally new scope covering geographical indications (GIs). This transformation has not only exceeded the mandate of the Lisbon Assembly, it has at critical junctures departed from longstanding WIPO process and practice, which are designed to ensure that the interests of all Members are respected. In this interest of adhering to clearly established WIPO institutional rules, ensuring appropriate consideration of the substantive issues at hand and avoiding a precedent that could harm the interests of Member States in other contexts in the future, the United States proposes this situation be redressed through the proper, if belated, engagement of various appropriate bodies within WIPO.

It is well-known that there has been a debate for decades over appropriate systems for the protection of GIs. It is well-known that the Standing Committee on Trademarks, Geographical Indications, and Industrial Designs (SCT) has jurisdiction and a standing agenda item for work on GIs. It is also well-known that there are several different and conflicting approaches to the protection of GIs that exist and that are being negotiated around the world.

Notwithstanding these broadly recognized realities, the Lisbon Agreement “revision” process to date has been driven and determined solely by the current members of that agreement, even while purporting to have the objective of ensuring greater global reach for the agreement that would be transformed to cover GIs generally. The process has sought to bypass objections of the wider WIPO membership to funding the revision effort (and the agreement’s ongoing operations), as well as objections to the proposed substantive harmonization standards. In essence, this “revision” process has allowed the Lisbon Union to advance its approach to GI protection toward a diplomatic conference in 2015 without meaningfully accepting input from other very interested WIPO delegations which in fact have an interest in the integrity of the process as well as the potential outcome.

In its proposal, the United States characterized the revised Lisbon text as TRIPS-plus while waxing lyrical about the flexibility afforded to WTO Members under the TRIPS Agreement "reflecting the sovereignty and diversity of the WTO membership." The United States noted,

For example, the Lisbon Working Group’s text not only exceeds the protections provided for GIs pursuant to provisions of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS), the text also severely limits the manner in which these protections can be implemented, whereas the TRIPS Agreement provides implementation flexibility, reflecting the sovereignty and diversity of the WTO membership.

The US proposal requested the International Bureau to conduct a survey of existing national GI regimes for the 32nd session of the WIPO SCT which in the view of the United States would "undoubtedly shed light on the complicated international landscape for GI owners, trademark owners, and users of generic terms that will provide appropriate guidance to the SCT and to WIPO in general on what is the most appropriate path forward to improve the situation." In addition, the US proposal sought to derail the Lisbon process on procedural grounds asserting that the WIPO membership at large was subsidizing a diplomatic conference in 2015 for the interests of a narrow few. The US proposal noted,

The Lisbon “revision” process has taken place not only without apparent regard for the Lisbon Union’s own mandates but without regard for important procedural rules and financial interests of WIPO as an organization that exists to serve the interests of its membership at large, not a narrow few. Among other things, the process reflects an apparent effort to perpetuate the historical subsidization of the agreement by the broader WIPO membership by forcing the organization to pay for a diplomatic conference to revise an agreement to which they are not parties and on which they thus far have been denied the opportunity to
voice meaningful objections in an appropriate WIPO forum.

The US proposal elicited a range of reactions with countries such as Argentina, Australia, Canada, Chile, Israel, Japan, New Zealand, and South Africa voicing support for the US proposal for a feasibility study on creating an international register and the EU, Georgia, Iran, Peru and Switzerland expressing their strong opposition to the US proposal.

In its intervention, the EU noted,

Currently the Lisbon System Working Group is working on the revision of the Lisbon System for the International Registration of Appellations of Origin, as a means for obtaining geographical indication protection internationally, through a single registration. A key aim of this revision is to make the Lisbon System more attractive to countries that are currently not party, such that the system might expand, and reach a wider membership. In an effort to build an inclusive system observer status to the Lisbon System Working Group is of course open to all WIPO members. The Lisbon System Working Group has already enjoyed much useful input from observers.

Chairman,

Whilst the prevailing divergent approaches to the protection of GIs is acknowledged, we believe that the best way to accommodate this diversity of national systems is through the expansion of the relevant registration systems run by WIPO: namely the Lisbon and Madrid Systems. Clearly, moving ahead with the revision of the Lisbon system, should be WIPO's first priority on GIs and in there so doing, may lead to improvements in relation to the diversity and flexibility allowed to Member States by the TRIPS Agreement.

Consequently, we do not feel that such a work program would add value at the present time, and are not in a position to endorse it.

Italy delivered the following impassioned intervention,

The main goal of the US proposal appears to delay the work of the Lisbon Union. The goal of the Lisbon System is NOT to impose a paradigm or system on countries. Pursuant to the mandate of the Lisbon Union, it aims to improve the work of the system. As to the substance of the US proposal, we are not against discussion of GIs at the SCT but a further study would only add to what we already know. Some countries use trademark protection, others use sui generis rights to prevent against misappropriation. In light of this diversity, we should leave to member states the democratic right on what system to use. Blocking the work of the Lisbon System would undermine the system the flexibility the TRIPS provides.

Switzerland remarked that it did not see any added value provided by the US proposal on geographical indications and noted that the US proposal need not be discussed at the SCT because its subject matter would have implications on other bodies (including the Lisbon Union). Switzerland noted that while the TRIPS Agreement provides minimum standards for the protection of geographical indications, it does not prevent countries from seeking higher levels of protection for GIs. Switzerland remarked, "we don’t appreciate the fact that the US proposal would jeopardize the work of the Lisbon Union."

Ultimately, on the question of geographical indications, the SCT remained at an impasse, and the " Chair concluded that, since delegations did not reach agreement on these issues, the SCT would revert to them at its next session (Summary by the Chair, SCT/31/9, 21 March 2014).

Given the firestorm GIs have generated in the context of the Transatlantic Trade and Investment Partnership (TTIP) negotiations, WIPO will be an interest place to watch. Come 2015, the Lisbon Union may create an international register for appellations of origin and geographical indication-something that has eluded the WTO for years-not without a long, drawn-out procedural fight at the WIPO General Assembly with Australia, Canada, New Zealand and the United States.