Matthijs Geuze, WIPO

1. Built-in Flexibilities of the Lisbon SystemForum on Geographical Indications and Appellations of OriginLisbon, October 30 and 31, 2008 Matthijs Geuze, WIPO

2. Why Built-in Flexibilitiesin the Lisbon System? • The existing variety in means of protection • The existing variety in definitions • The existing variety in terminology • The existing variety in scope of protection

3. GI Protection LandscapeAround the World • Laws focusing on business practices • Sui generis legislation • concerning specifically defined characteristics of the product or methods of their production • Trademark law • Other means of protection

4. GI Definition Landscape:- common denominators of the elements by which definitions aim to capture the value-added of GIs • Typicality • characteristics of a product that make the product unique and which allow the product to be identified geographically • Reputation • (1) degree of recognition by consumers of the typicality of products and (2) the collective goodwill that they represent on the market

5. Terminology Landscape

6. Use of a recognized GI by a person not eligible or authorized to use it, without any test as to the nature of that use Use which is "false", "incorrect", or "does not correspond to the place specified" Use which might mislead, deceive or create a false impression regarding the geographical origin of the products Misuse, imitation or evocation, even with delocalising qualifiers Use of a GI on products which, while originating in the indicated area, do not meet the production or product requirements on which the use of the IGO is conditional Use damaging or exploiting the reputation, irrespective of whether the public is misled Acts contrary to "good practice" or "honest commercial practices“ Conduct liable to mislead or deceive the public Non-authorized use of reputation or goodwill Scope of Protection Landscape

7. Flexibility as to the Means of Protection • Rule 5(2)(a)(vi) Lisbon Regulations • Records Lisbon Conference 1958, p.815 • Protection of the appellation in the country of origin by virtue of legislative provisions, administrative provisions, a judicial decision or registration at a national Agency • Records Lisbon Conference 1958, p. 860 • The Agreement lays down the protection to be provided at a minimum and is not meant to affect in any way already existing agreements on the matter

8. Lisbon System: Registrable Appellations - Two Cumulative Yardsticks • Records Lisbon Conference 1958, p.859 • Definition of « appellation of origin » in Article 2(1) • Without prejudice to national definitions that may be broader or more precise • Records Lisbon Conference 1958, p.859 • The word « recognized » in Article 1 means that the appellation is to concern a product enjoying a certain reputation • Definition « country of origin » in Article 2(2)

9. Basis and Justification for Protection • Article 1(2) Lisbon - Recognized and Protected in the Country of Origin, • i.e.: • a product with a certain reputation, as defined in Article 2(2); • whose appellation meets the definition of Article 2(1); and • which is protected by virtue of some formal means (law, decree, judicial decision or registration)

10. Definition- Article 2(2) reputation in the “country of origin”, i.e.: The country whose name, or in which is situated the region or locality whose name, constitutes the appellation of origin which has given the product its reputation

11. Definition- Article 2(1) Appellation of Origin The geographical denomination of a country, region, or locality, which serves to designate a product originating therein, of which the quality or characteristics are due exclusively or essentially to the geographical environment, including natural and human factors

12. Definition- TRIPS Geographical Indication Indication which identifies a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin

13. Scope of Protection (1) Usurpation - Article 3 Lisbon Protection shall be 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 “type”, etc. Records Lisbon Conference 1958, p.815 Infringement of the exclusive rights of the holders of the right to use the appellation through unlawful appropriation – in certain legislations called usurpation or counterfeiting – or fraudulent imitation

14. Scope of Protection (2) Unfair Competition - Article 4 Lisbon Confirms the protection that may already exist in a member country by virtue of other international instruments, national law or court decisions Records Lisbon Conference 1958, p.816 Apart from usurpation or counterfeiting, there are a whole range of acts that may qualify as acts of unfair competition and are to be prohibited

15. Effect of international registration Records Lisbon Conference 1958, p.816-818 • Other countries will know the precise appellation to be protected • These countries will be required to take position with regard to the appellation • They may refuse protection but, if they don’t, they should, in principle, prevent the appellation from becoming generic Rule 16 Lisbon Regulations • Procedure for notification of invalidation

16. Effect of a refusal Article 5(3) • The competent authority is entitled to declare, within a time-limit of one year, that protection cannot be ensured • Requirement to indicate the grounds for such a refusal Records Lisbon Conference 1958, p.817 • Refusal can be based on any situation of fact or law preventing the grant of protection • The grounds for refusal constitute the basis for negotiating a possible understanding

17. How Do Competent Authorities of Lisbon Member States Find Out About the Existence of Any Situation of Fact or Law Preventing the Grant of Protection? • Ex Officio Examination Only? • Third Party Procedures?

18. Denomination does not meet the definition Generic indication of a type of product Just an indication of the origin of products Homonymous denomination that does not meet the definition The denomination is not geographical The denomination is insufficiently precise to be able to meet the definition The competent authority is not convinced that the denomination meets the definition Grounds for refusal in practice- refusals based on the definition of Art. 2(1)

19. Protection of the appellation is prevented by an earlier trademark An opposition or request for cancellation has been filed against the appellation The appellation is refused only partially: it cannot be used to prevent the use of a specified homonymous appellation Protection is refused unless a specified homonymous denomination can coexist Grounds for refusal in practice- refusals based on an earlier right

20. Use of the appellation is likely to generate confusion Registration of the appellation has not taken place in respect of all producers in the region The appellation is against religious values, ethics or public order Grounds for refusal in practice- refusals based on an other ground

21. Effect of a refusal Records Lisbon Conference 1958, p.817 • The grounds for refusal constitute the basis for negotiating a possible understanding Withdrawal of a refusal • Rule 11 Regulations (« in part or in whole ») • Article 5(6) Agreement - applicable?

22. THANK YOU Matthijs Geuze WIPO