Geographical indications protection, EU towards Geneva Act

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Designations of Origin (DO) and Geographical Indications (GI). On 3/14/19, the European Union decided to join the Lisbon Union for their international protection. At least in part, in theory. All is well, an understatement.

International protection of GIs, from Lisbon to Geneva

The European Union, in the now-closing legislature, began to dismantle the system of protection of PDOs and PGIs registered in the old continent. With the paradox of legitimizing the ‘Parmesan‘ and partial evocations of protected names (e.g. ‘mozzarella Tokyo PDO, ‘prosciutto di Palma PDO‘, etc.), in the partnership agreement with Japan(JEFTA.). Rather than give up Gorgonzola, Fontina and Asiago DOP – and more generally 6/7 of Italy’s GIs – in the treaty with Canada(CETA). In the broader context of toxic treaties

that this Europe brings forth, to immolate democracy



and human rights

On the altar of neoliberalism. Waiting for the TTIP zombie, for thetransatlantic epilogue.. (1)

And it is the EU itself, by curious astral conjuncture, that is now rediscovering the 1958 Lisbon International Agreement for the international protection of geographical indications. Reconsidering the desirability of following a single international registration procedure, with minimal costs and formalities, to strengthen the protection regime for GIs.

The Lisbon Agreement, administered by the Worldwide Intellectual Property Organization (WIPO), was actually entered into to facilitate and promote the recognition of (only) appellations of origin. But it has not achieved the goal in the intervening 61 years because of limited memberships. Only seven European states are members – France and Portugal since ’66, Hungary (’67), Italy (’68), Bulgaria (’75), the Czech Republic and Slovakia (’93) – while three others, although they have signed the agreement, have not ratified it (Greece, Romania and Spain).

The Geneva Act, in 2015, supplemented the Lisbon Agreement by strengthening its scope of protection in two respects:

  • scope, extended from designations of origin alone to all geographical indications, according to definitions that are consistent with those provided in appropriate European legislation (as well as in the TRIPS agreement, ‘Trade-Related Aspects of Intellectual Property Rights,’ under the WTO),
  • international organizations, such as the European Union, admitted to join and thus to become contracting parties to the Lisbon Union.

Geneva Act, the international registration of DOs and GIs

The Lisbon Agreement, as supplemented by the Geneva Act, defines the terms, conditions and procedures by which contracting parties may seek protection of designations of origin (DOs) and geographical indications (GIs).

The protection of DOs and GIs must first be formalized in the Lisbon Union member country (or international organization) in order for it to be registered and protected there. The contracting parties are therefore required to protect in their respective territories designations of origin (DOs) and geographical indications (GIs) registered with the International Intellectual Property Organization (WIPO, or WIPO).

However, this is without prejudice to the possibility of other contractors to object to the registration. Based, among other things, on the pre-existence of a similar trademark already protected in its territory (e.g., ‘Parma ham’ in Canada). In such a case, the declaration of refusal, which can be appealed by the party concerned, must be notified to WIPO within one year of the transposition of the registration notice (Art. 9).

Each contracting party must provide appropriate legal means to prevent the use of the designation of origin or geographical indication in relation to products of the same type, but of different origin to that which is the subject of registration. With extension of protection to products of different commodity classes and services, where the reference to the registered name may suggest a connection presenting the risk of:

  • Harm the interests of the DO or IG, or otherwise compromise or weaken its reputation, or
  • Enable the applicant to take unfair advantage of it.

Any other practice that could mislead the consumer as to the actual origin, provenance or nature of the products is also prohibited. (Art. 11)

The link between the origin or provenance and the characteristics of the product is now a ‘conditio sine qua non‘ to its protection as a DO or GI in the Lisbon Agreement, where such a requirement is stipulated as mandatory and the application for registration does not comply with it. Applications must include notice of previous denials of guardianship, even partial denials, to the best of the applicant’s knowledge.

Registration fees increase from 500 CHF to 1,000 CHF. On this occasion, an additional fee (500 CHF) is charged for each name already registered. And a ‘margin of flexibility’ is introduced so that members can make larger contributions in the future, where required by budgetary needs. The contracting parties may also charge an individual fee to cover the costs of substantive examination of the international registration.

Italy has registered in the Lisbon System 175 designations of origin, including ‘Parmigiano Reggiano’ and ‘Grana Padano,’ on as many foods and beverages. Compared to a total of 1,130 products entered in the ‘LisbonExpress Database’ and thus protected (at least in theory) in the context of the Lisbon Union. (4) Compared with more than 3,000 names of wines, spirits and food products from member states and third countries (under conditions of partial reciprocity) currently registered in the EU.

Accession to the Geneva Act and the Lisbon Union, EU agreement

The ‘Lisbon system’ can protect EU-registered DOs and GIs provided that the European Union becomes a party to the Geneva Act and thus joins the Lisbon Union. Accession is also necessary to enable the EU to exercise its exclusive functions under its systems for protecting designations of origin and geographical indications on agricultural products and foodstuffs.

Therefore, the European Commission had proposed to the Council on 7/27/18 to accede to the Geneva Act. (2) On 14.3.19, the European Parliament, the Council and the Commission reached a political agreement on the rules establishing how the EU will operate as a member of the Geneva Act. In order for the EU to formally join the Geneva Act, the draft regulation must now be formally approved by the European Parliament and the Council. (3)

Once the EU becomes a contracting party to the Geneva Act, the Union will have to submit a list of designations of origin and geographical indications extracted from its registers (to be agreed with member states), in relation to which protection is sought under the Lisbon system.

Subsequent applications, for additional names of registered specificities, may be made at the initiative of the Commission or through it by interested member states or groups of operators.

Protection of European specialties, from words to deeds

The Commissioner for Agriculture and Rural Development, Phil Hogan, said that ”through this policy agreement, EU geographical indications can benefit from enhanced protection at the multilateral level. The agreement will complement bilateral agreements that already protect EU geographical indications around the world.’

It is only a pity that the bilateral agreements brought forward by the Commission to which Hogan belongs have instead betrayed the European system of protecting traditional agri-food specialties rooted in territories. In just a few months, between CETA and JEFTA, the traitors in Brussels have imploded a system whose foundations go back 68 years, in the ‘International Convention on the Use of Appellations of Origin and Designations of Cheese‘ (at Stresa, 1.6.1951).


In negotiations

of bilateral agreements
(such as CETA or the agreement currently being negotiated with Mercosur), the EU often has to make do with a very limited list of names, which creates great frustration among producers whose DOs or GIs remain excluded from these lists. In a multilateral context, such as that of the Lisbon system, in which all participating countries recognize the value and benefits of adequate protection of DOs and GIs, the Commission should be determined and ambitious in its attempt to register all names in the Union. Or at least, those with genuine international commercial value‘ (Hon. Czesław Adam Siekierski, AGRI Committee, European Parliament, 1.10.18)

Rather, from words to deeds, it seems that the European Union insists on wearing down the PDO and PGI protection system. Setting the stage for public protection to finally give way to private interests. The principle of prior art will give precedence to trademarks registered earlier, without distinguishing between individual and collective rights (among the latter of which DOs and GIs are enrolled). With the likely mockery of finding ourselves, in Europe itself, having to recognize and unable to hinder the use of trademarks evocative of our specificities.

Dario Dongo

Notes

(1) The TTIP (EU-US Treaty) has been re-proposed by the European Commission to the European Parliament. On 3/22/19, the European Council agreed to instruct the European Commission to reopen negotiations with Trump, with Italy also giving the green light.



(2)





https://ec.europa.eu/info/news/eu-join-geneva-act-lisbon-agreement-better-protect-gis-2018-jul-27_en





(3)





https://eur-lex.europa.eu/legal-content/IT/TXT/PDF/?uri=CELEX:52018PC0365&from=IT





(4)





https://www.wipo.int/ipdl/en/search/lisbon/search-struct.jsp



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Dario Dongo, lawyer and journalist, PhD in international food law, founder of WIISE (FARE - GIFT - Food Times) and Égalité.