Good news from Geneva for Geographical Indications

A Diplomatic Conference held in Geneva in May 2015 has resulted in a new act being adopted which will revise the Lisbon System and provide additional protection and an international registration system for Geographical Indications.

According to WIPO (World Intellectual Property Organisation) a Geographical Indication (GI) is 'a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin'.  The difference between this and an Appellation of Origin (AO) is that whilst both require a qualitative link between a product and its place of origin, in the case of an AO the link with the place of origin must be stronger than with a GI. According to WIPO 'The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin'.

The Lisbon Agreement

The Lisbon Agreement is an international treaty offering AOs protection against 'usurpation' or 'imitation'. The Agreement established the Lisbon System for the International Registration of Appellations of Origin (the Lisbon System) which provides contracting parties with access to an international registration system for AOs through a single registration with an international bureau.

The Geneva Act

On 21 May 2015 the Lisbon System was revised by the adoption of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (the Geneva Act).  The Lisbon System now applies to GIs as well as AOs.

According to a WIPO press release dated 20 May 2015 the Geneva Act 'allows the international registration of geographical indications, in addition to appellations of origin, and permits the accession to the Lisbon Agreement by certain intergovernmental organizations'.

In addition the Geneva Act will alter the scope of protection offered under the Lisbon Agreement, offer protection against GIs and AOs becoming generic, provide safeguards in respect of prior trademark rights and make changes to fee provisions.

The new act will enter into force three months after five eligible parties have deposited their instruments of ratification or accession. On Thursday 21 May 2015 there were 11 countries signed up (the UK has not yet done so).

Commentary

The right to use a GI is an extremely valuable asset for the producers of products that have garnered fame as a result of their connection to a specific location.

Take for example the GI 'Irish Whiskey' which is protected under articles 15 and 16 of the EU Spirits Regulation.  Irish Whiskey has a heritage and taste quite distinct from whiskey produced elsewhere in the world and consumers of Irish Whiskey naturally attach importance to the characteristics of whiskey originating from Ireland.  As a result the GI 'Irish Whiskey' has the power both to inform consumers and attract them to a product in much the same way as a trade mark does in relation to branded goods.  If Irish Whiskey is to maintain its reputation (and continue to generate the financial benefits flowing from that reputation) it is crucial that whiskey originating from elsewhere in the world cannot be labelled as 'Irish'.  The same applies to products such as Roquefort cheese, Grana Padano and Cornish Pasties, which are all listed as GIs protected in some capacity in the EU.

Due to the inherent value of a GI, the enhanced protection offered by the Geneva Act will be welcomed by those whose products are covered by a GI. 

By their nature, products that qualify to be labelled with a GI are likely to be marketed globally and therefore require protection against wrongful use of GIs across multiple jurisdictions.  The new international registration system for GIs should provide security for businesses requiring protection in multiple jurisdictions by creating a more cohesive, coordinated and effective system of international protection.