Author: Marsha S. Cadogan
Recent news that the European Union (EU) will join the Geneva Act of the Lisbon Agreement for the Protection of Appellations of Origin and Geographical Indications, ( Lisbon Agreement ) on Feb. 26, 2020, has once again put a spotlight on GI designations. GIs are symbols or words that convey that there is a directly traceable and unique relationship between a product and its place of origin. The product-place link needs to be either in the quality, characteristics or reputation of the commodity, and in terms of the place, be attributable to its natural resources, or to unique or traditional ways individuals use to produce a product. There are so many themes that arise from GI discussion, but let’s zone in on what the EU has done, and whether it makes a difference in GI protection available to businesses globally, including in Canada.
What is the Lisbon Agreement?
The Lisbon Agreement is an international treaty that enables its contracting parties to protect appellations of origin on high levels. An amendment to the treaty was made in 2015. The amended treaty is called the Geneva Act of the Lisbon Agreement and will become effective in February, when the fifth needed member – the EU – officially joins. GI designation from countries that sign on to the treaty are protected indefinitely, cannot become generic and no other competitor can use the GI name on any product in its product class.
When the EU joins the Lisbon Agreement (Geneva) what will happen to global GI rights?
- For the EU, it means that any country party to the Lisbon Agreement that it has yet to form or conclude a free trade agreement with is obliged to extend expansive GI protection (specified above) on registered GI products from the EU. Almost all of EU initiated free trade agreements include specific provisions on GIs that require the host country (or region) to extend strong protection for GIs coming from the EU (see CETA and EU-China free trade agreements as examples).
- Countries not party to the Lisbon Agreement who offer less protection in their IP laws for GIs than that mandated under the Agreement may find that:
(i) In the IP chapter of free trade negotiations with Lisbon Agreement members, there are more persistent demands for GI protection on terms similar to that contained in the agreement;
(ii) In some jurisdictions, GI rightsholders are able to secure better protection for their designations than they can in their home countries. Contracting parties to the Lisbon Agreement are obliged to provide strong protection for GIs among their network – meaning for members to the Agreement. Aside from this, there remains a discretion in each contracting party jurisdiction, on how to treat GIs that originate in non-Lisbon Agreement territories. Should GI registrations be on the same terms as that offered to contracting party member countries? For example, in the EU, a product must be registered in its home jurisdiction before seeking registration in EU national countries. In Switzerland, this is not a requirement, home registration is not necessary. Furthermore, because not all World Trade Organization (WTO) members are party to the Lisbon Agreement, the challenge of different levels of protection for GI products will still exist globally.
What does the Lisbon Agreement (Geneva) mean for Canada?
At this point not much. Canada is still new to food and agricultural based GI. Recent changes to the Trademarks Act now make it possible for food and agri-based GIs to be registered in Canada. However, Canada’s GI laws are not as extensive as those under the Lisbon Agreement. With a pending CUSMA ratification in Canada, it is unlikely that Canada will join the Lisbon Agreement as the United States is against the global expansion of GI rights.
On GIs and free trade agreement see: Marsha S. Cadogan (co-authored) CETA and the Future of Protection for Geographical Indications In Canada , CIGI Paper No. 131.
This post provides general information and is not meant to be legal advise. For legal advise on Geographical Indications, contact Marsha at firstname.lastname@example.org