Why and How to use the new Lisbon System (Geneva Act) to protect your GI abroad
The Lisbon System for the International Registration of AO/ GIs provides a detailed method of obtaining protection for appellation of origin or a geographical indication in the contracting parties through a single registration procedure and one set of fees. The Lisbon webinar series was conducted by the World Intellectual Property Organization (WIPO). ‘Why and How to use the new Lisbon System (Geneva Act) to protect your GI abroad?’ was a part of this series and was conducted on 9th March 2021 by Legal Officer Matteo Gragnani and Associate Legal Officer Michele Evangelista of WIPO. Major takeaways from the webinar are:
How the Lisbon system is used to protect geographical indication abroad,
Flexibilities introduced in the application process by the Geneva Act,
Difference between geographical indication, the appellation of origin, and an indication of the source,
The three-stage registration procedure with the Lisbon system.
Ø Why and how to use the Lisbon system (Geneva Act) to protect GI abroad-
The Geneva Act seeks to improve the existing system of protecting marks based on geographical origins through the Lisbon Agreement for Protection of Appellations of Origin and their International Registration, 1958(The Lisbon Agreement). The Agreement applies only to appellations of origin. They are geographical indications for items that have a solid connection with their place of origin.
The Geneva Act stretches out the protection to Geographical Indications along with appellations of origin. It does so to improve the existing national or regional systems that protect distinctive designations in respect of origin-based quality items. The protection standard of the Act is very flexible, as mentioned in Articles 9 and 10 of the Act. As per the Articles, the protection standard could be implemented by sui generis appellation of origin, geographical indication system, trademark system, or by legislation.
Another major innovation of the Geneva Act is the possibility for inter-governmental organizations to join the Lisbon system. This way, the system becomes more inclusive. The ‘Lisbon Agreement’, coupled with the Geneva Act, comprises the Lisbon System. It offers more far-reaching and effective protection for the names of origin-based quality items.
Ø Difference between geographical indication and an indication of source-
Indication of source only informs the country or place in a country from where the product originates. As opposed to a geographical indication, an indication of source gives no information about any unique quality of the item, or any characteristic attributable to its place of origin.
Ø Difference between geographical indication and Appellation of origin-
Appellations of origin are a special kind of Geographical Indication. The only difference between the two lies in the intensity of the link with the place of origin. It is stronger in the case of the appellant of origin as compared to GI. Another difference between the two pertains to a component of ‘reputation’; which is necessary for appellations of origin as against GIs.
The extension of GI subject matter in simpler words means that many products today, with even the slightest of connection with their place of origin, can have access to the Lisbon system. The Geneva Act makes a distinction between the infringement with similar goods and infringement with goods of different kinds. Article 11 of the Act provides for the protection of well-known marks and geographical indications. It lists down a few of the situations where the Member States have to provide legal ways to prevent the unauthorized use of GIs. Article 13 of the Act also provides several safeguards in respect of other rights, such as prior good faith trademarks. The provisions of the Act shall not prejudice a prior trademark applied for or registered in good faith. There are also other safeguards listed in Article 13 in respect of other rights for personal names, plant varieties, or animal breed denominations that can be continued to be used, provided they are used in a non-misleading manner.
Registration procedure with Lisbon system-
The Lisbon System provides for a single registration procedure. The registration procedure is a three-stage process.
The first stage is – ‘Title of protection in Contracting Party of origin’. As per article 5(2) of the Act, applicants either could be
beneficiaries - who have the right to use GI/AO
Or natural persons or legal bodies who have legal status to claim the rights of beneficiaries.
This application is filed by a competent authority. However, under this Act, there is also a possibility to directly file an application by interested parties subject to declaration by their contracting party to the international bureau. Another flexibility introduced by the Geneva Act is the possibility to file a joint application for trans-border AO/GIs. The application has to contain certain mandatory requirements which are the indication of contracting party or origin, name of GI or population origin, good to which GI applies, etc. Lastly, it is also necessary to pay the registration fee which is around 1000 Swiss francs. The applicant is often asked to declare if they intend to use such a GI in the contract in the jurisdiction of the contracting party. Lastly, there is also payment of an individual fee which covers the cost of substantive examination of the international application at the national level by each contracting party.
Non-compliance with these declaration requirements would result in renouncing the protection of GI in the jurisdiction of the contracting party. The date of the international registration is the date when the application is received by the international bureau. An applicant additionally is given a period of 3 months to rectify any irregularities in their application after being notified.
The second stage- This stage is the formal examination of the application. It is only after the formal examination of the application that a certificate of registration is issued to the competent authority or contracting party. This issuance is recorded in the Lisbon registry.
The third stage- This stage is the protection of international registration determined by substantive examination under domestic law within a year of registration on the Lisbon registry. This Act introduces a mechanism to refuse new GIs or withdraw it totally or partially. It also permits the interested parties to request other parties to notify the refusal with respect to international registration. For managing geographical indications after its registration in the Lisbon registry, there are few mechanisms listed in the Act such as-
Withdrawal of refusal,
Cancellation of the geographical indication on the Lisbon registry.
The legislative innovations in the new Lisbon system as discussed above have substantially helped to provide a simple means to protect appellation of origin or geographical indication in member countries.