The Lisbon Agreement was an important and comprehensive agreement for the international registration and protection of AOs. This Agreement created another
‘Special Union’ under Article 19 of the Paris Convention after the Madrid Agreement on the Indications of Source, 1891. It strengthened AOs beyond the protection provided to them under the Paris Convention of 1883 and the Madrid Agreement on the Indications of Source, 1891.53
This agreement defined AOs along French lines. It restricted protected GIs to the cases where the characteristics and quality of a product were ‘due exclusively or essentially to the geographical environment, including natural and human factors’.54 Article 2 of the Lisbon Agreement defines AOs as ‘the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or
52 O’Connor (n 1) 35.
53 See Gangjee (n 12) 127. See also ‘The Law of Geographical Indications’ 37.
54 Blakeney (n 18) 11.
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characteristics55 of which are due exclusively or essentially to the geographical environment, including natural and human factors’. This definition later influenced the definition of GIs in Article 22.156 of the TRIPS Agreement. This Agreement is also important and different from the earlier treaties and conventions because ‘beyond the consumer-centric agenda the proposal introduced the Appellation of Origin (AO) and recognised the need to protect economic benefits associated with valuable reputations’.57
Article 2(1) identifies the link between the place and the product where the ‘quality or characteristics of (the product) are due exclusively or essentially to the geographical environment’. Therefore, ‘either quality or (qualitatively evaluated) distinctive features are ‘exclusively or essentially’ attributable to the influence of place’.58
Further, there is greater protection granted under the Lisbon Agreement. Protection of AOs under this agreement ‘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 “kind”, “type”, “make”, “imitation”, or the like’.59
Article 560 of the Lisbon Agreement provides for the registration and notification of AOs. Article 5(1) provides for the registration of AOs with the International Bureau,
55 There was confusion over whether the provision meant ‘quality and characteristics’ as in earlier English translation or otherwise as described by the official French text as ‘quality or characteristics’.
The latter is acknowledged now. See Gangjee (n 12) 131.
56 Article 22.1 of the TRIPS Agreement states that: ‘geographical indications are, for the purposes of this Agreement, indications which identify 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’. Agreement on Trade-Related Aspects of
Intellectual Property Rights, (Annex 1c, Marrakesh Agreement Establishing the World Trade Organization, signed 15 April 1994).
57 See Gangjee (n 12) 127, 131.
58 ibid 137, 138.
59 Lisbon Agreement, Article 3.
60 Article 5 of the Lisbon Agreement states that:
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‘at the request of the Authorities of the countries of the Special Union, in the name of any natural persons or legal entities, public or private, having, according to their national legislation, the right to use such appellations’. Hence, such a registration requires the existence of national registration for international protection. Article 5(2) requires the International Bureau to notify the Authorities of the Special Union of such registration without delay.
The Lisbon Agreement is not clear on the duration of protection for AOs. According to its Article 7: ‘(1) Registration effected with the International Bureau in conformity with Article 5 shall ensure, without renewal, protection for the whole of the period referred to in the foregoing Article.’ Article 5 of the Lisbon Agreement does not refer to the time period for protection but only ‘to the process of declaring that certain appellations cannot be protected. However, since Article 7(1) refers to an absence of renewals, the
‘International Registration; Refusal; Notifications; Use Tolerated for a Fixed Period
(1) The registration of appellations of origin shall be effected with the International Bureau, at the request of the Authorities of the countries of the Special Union, in the name of any natural persons or legal entities, public or private, having, according to their national legislation, the right to use such appellations.
(2) The International Bureau shall, without delay, notify the Authorities of the various countries of the Special Union of such registrations, and shall publish them in a periodical.
(3) The Authority of any country may declare that it cannot ensure the protection of an appellation of origin whose registration has been notified to it, but only in so far as its declaration is notified to the International Bureau, together with an indication of the grounds therefor, within a period of one year from the receipt of the notification of registration, and provided that such declaration is not detrimental, in the country concerned, to the other forms of protection of the appellation which the owner thereof may be entitled to claim under Article 4, above.
(4) Such declaration may not be opposed by the Authorities of the countries of the Union after the expiration of the period of one year provided for in the foregoing paragraph.
(5) The International Bureau shall, as soon as possible, notify the Authority of the country of origin of any declaration made under the terms of paragraph (3) by the Authority of another country. The interested party, when informed by his national Authority of the declaration made by another country, may resort, in that other country, to all the judicial and administrative remedies open to the nationals of that country.
(6) If an appellation which has been granted protection in a given country pursuant to notification of its international registration has already been used by third parties in that country from a date prior to such notification, the competent Authority of the said country shall have the right to grant to such third parties a period not exceeding two years to terminate such use, on condition that it advise the
International Bureau accordingly during the three months following the expiration of the period of one year provided for in paragraph (3), above.’
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assumption is that an appellation is protected for as long as it remains an appellation in the relevant country of origin.’61
Article 6 of the Lisbon Agreement shields AOs against becoming generic. It states that:
‘an appellation which has been granted protection in one of the countries of the Special Union pursuant to the procedure under Article 5 cannot, in that country, be deemed to have become generic, as long as it is protected as an appellation of origin in the country of origin’.
Gangjee has described the Lisbon Agreement as ‘the high water mark in the international protection’ of GIs. The salient features of the Agreement are:
recognition of the AO as distinct subject matter’; ‘international registration based on prior recognition at the national level’; and ‘desirable consequences flowing from this registration, including the prohibition of a range of (mis)uses beyond misleading ones and the prevention of subsequent generic use after registration.62
Few countries became part of this Agreement. Accession was possible for those countries which protected GIs as AOs; countries which protected GIs under unfair competition law or consumer protection laws were precluded. Further, the agreement did not cater for any solution for those GIs which had become generic in respective member states.63 Nevertheless, the Lisbon Agreement set in motion the formal transition from ‘indications of source’ to ‘appellations of origin’.64
61 Michael Blakeney, The Protection of Geographical Indications: Law and Practice (Edward Elgar 2014) 16.
62 See Gangjee (n 12) 128.
63 Blakeney (n 18) 11.
64 See Gangjee (n 12) 177.
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