New International Registration System for Geographical Indications and Appellations of Origin

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Jane Lambert

The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications came into force on 26 Feb 2020.  Art 29 (2) of the Act provides for it to enter into force three months after five eligible parties referred to in art 28 have deposited their instruments of ratification or accession.  That condition was satisfied on 26 Nov 2019 when the European Union deposited its instrument of accession with Francis Gurry, the Director-General of the World Intellectual Property Organization ("WIPO") (see WIPO press release European Union Joins Geneva Act of WIPO’s Lisbon Agreement, Enabling Entry into Force 26 Nov 2019).

The Geneva Act supplements the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of 15 Oct 1958 by providing for the registration of geographical indications as well as appellations of origin and by making it possible for international organizations such as the European Union to accede to the Act.  The difference between an "appellation of origin" and a "geographical indication" is a subtle one.  Art 1 (vi) of the Act defines an "appellation of origin" as  "a denomination as referred to in Article 2(1)(i)." That sub-paragraph provides:

"any denomination protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another denomination known as referring to such area, which serves to designate a good as originating in that geographical area, where the quality or characteristics of the good are due exclusively or essentially to the geographical environment, including natural and human factors, and which has given the good its reputation."

Art 1 (vii) defines a“geographical indication” as "an indication as referred to in Article 2(1)(ii)." That provides:

"any indication protected in the Contracting Party of Origin consisting of or containing the name of a geographical area, or another indication known as referring to such area, which identifies a good as originating in that geographical area, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin."

Art 4 of the Act requires the WIPO's International Bureau to "maintain an International Register recording international registrations effected under this Act, under the Lisbon Agreement and the 1967 Act, or under both, and data relating to such international registrations."  Contracting parties are required by art 8 to:

"protect registered appellations of origin and geographical indications on its territory, within its own legal system and practice but in accordance with the terms of this Act, subject to any refusal, renunciation, invalidation or cancellation that may become effective with respect to its territory, and on the understanding that Contracting Parties that do not distinguish in their national or regional legislation as between appellations of origin and geographical indications shall not be required to introduce such a distinction into their national or regional legislation."

Each contracting party is required by art 3 to l designate an entity which shall be responsible for the administration of this Act in its territory.

The United Kingdom is party neither to the Lisbon Agreement nor the Geneva Act but the Act applies to the United Kingdom until 31 Dec 2020 by virtue of art 126 of the Agreement on the withdrawal of the United Kingdom of Great Britain and Northern Ireland from the European Union and the European Atomic Energy Community of 19 Oct 2019 and s.1 of the European Union (Withdrawal Agreement) Act 2020 (see Jane Lambert Intellectual Property Post Brexit 2 Feb 2020 NIPC Brexit). However, as a member of the World Trade Organization in its own right, the UK is bound by art 22 of TRIPS (The Agreement on Trade-Related Aspects of Intellectual Property Rights) to protect geographical indications.  As I explained in Geographical Indications - "If it's outside Yorkshire it's not worth ..................!" 30 Aug 2013 IP Yorkshire, that obligation is discharged by the law of passing off, trade mark registration and the EU's sui generis protection of geographical indications.  The EU sui generis protection will cease on 31 Dec 2020 but the UK has agreed to continue such protection after that date under art 54 (2) of the withdrawal agreement.

Anyone wishing to discuss this article or geographical indications generally may call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact page.


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