Objectives and Main Features of the Lisbon Agreement

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration (Lisbon Agreement) was adopted in 1958 and revised at Stockholm in 1967. It entered into force on September 25, 1966, and is administered by the International Bureau of the World Intellectual Property Organization (WIPO), which keeps the International Register of Appellations of Origin and publishes a bulletin entitled Appellations of origin.

The Lisbon Express database allows for a search on appellations of origin as registered under the Lisbon Agreement, the product to which they apply, their area of production, the holders of the right to use the appellation of origin, any refusals or invalidations notified by member countries, etc.

The Agreement is supplemented by Regulations. The latest version of these Regulations was adopted in September 2011, with a date of entry into force of January 1, 2012.

The Lisbon Agreement is a special Agreement under Article 19 of the Paris Convention for the Protection of Industrial Property. Any country party to the Convention may accede to the Agreement. Countries adhering to the Lisbon Agreement (1967) become members of the Lisbon Union Assembly. The list of countries party to the Lisbon Agreement shows that all contracting parties except one are members of the Lisbon Union Assembly. The Lisbon Union Assembly has the authority to modify the Regulations.

Objective

In many countries, unfair competition or consumer protection laws contain general provisions dealing with the misappropriation of indications serving to designate products that originate in a geographical area. In addition, many countries have also put in place special systems aimed at identifying the specific features for which such indications are known to designate the products in question and deserve special protection. Securing protection for such indications in other countries has, however, been complicated due to differences in legal concepts existing from country to country in this regard and developed in accordance with different national legal traditions within a framework of specific historical and economic conditions.

The Lisbon Agreement was concluded in response to the need for an international system that would facilitate the protection of a special category of such geographical indications, i.e. “appellations of origin”, in countries other than the country of origin, by means of their registration at the International Bureau of WIPO.

Recognition and Protection in the Country of Origin

Article 1(2) of the Lisbon Agreement lays down that, in order to qualify for registration at the International Bureau of WIPO, an “appellation of origin” must be “recognized” and “protected” in the “country of origin”. Article 2(1) elaborates on this by defining “appellation of origin” and Article 2(2) by defining “country of origin” (see further paragraph 9, below).

On this basis, the condition that the appellation of origin must be “recognized” and “protected” in the country of origin means that the appellation of origin must be constituted by a geographical denomination that is protected in the country of origin as the denomination of a geographical area (country, region or locality) recognized as serving to designate a product that originates therein and meets certain qualifications. Such recognition of the denomination must be based on the reputation of the product and protection of the appellation of origin must have been formalized by means of legislative provisions, administrative provisions, a judicial decision or any form of registration. The manner in which recognition takes place is determined by the domestic legislation of the country of origin.

Definition of an Appellation of Origin

Article 2(1) of the Lisbon Agreement defines an “appellation of origin” as “the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors”. Article 2(2) defines the “country of origin” as “the country whose name, or the country in which is situated the region or locality whose name, constitutes the appellation of origin that has given the product its reputation”.

Three elements should be noted in these definitions:

First, the requirement that the appellation of origin should be the geographical denomination of a country, region or locality means that the appellation is to consist of a denomination that identifies a geographical entity in the country of origin.
Secondly, the requirement that the appellation of origin must serve to designate a product originating in the country, region or locality concerned means that, in addition to identifying a place, the geographical denomination in question must be known as the designation of a product originating in that place – requirement of reputation.
The third requirement concerns the quality or characteristics of the product to which the appellation of origin relates, which must be due exclusively or essentially to the geographical environment of the place where the product originates. The reference to the geographical environment means that there is to be a qualitative connection between the product and the place in which the product originates. The geographical environment is determined on the one hand by a set of natural factors (such as soil and climate), and on the other hand by a set of human factors – for instance, the traditional knowledge or know how used in the place where the product originates).

Protection to be Accorded

Similar to the Madrid and Hague systems (concerning, respectively, the international registration of trademarks and the industrial designs), the Lisbon system facilitates the registration of industrial property rights at the international level on the basis of provisions laying down the procedural rules governing the international registration procedure. However, the Lisbon Agreement also lays down a number of provisions laying down the protection to be accorded to internationally registered appellations of origin. Thus, Article 3 defines that the Member States are to protect appellations of origin registered at the International Bureau against any usurpation or imitation of the appellation of origin, even if the true origin of the product is stated or if the appellation is used in translated form or accompanied by terms such as “kind,” “type,” “make,” “imitation” or the like.

It should also be mentioned that the protection to be provided under the Lisbon Agreement does not rule out any protection that might already exist in a member country by virtue of other international treaties, such as the Paris Convention, the Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods or the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), by virtue of bilateral or regional agreements, or by virtue of national legislation or court decisions.

The member countries are under the obligation to provide a means of defense against any usurpation or imitation of an appellation of origin in their territory. The necessary action has to be taken before the competent authorities of each of the countries of the Union in which the appellation is protected, according to the procedural rules laid down in the national legislation of those countries.

Effects of Registration

Annex II contains a brief description of the procedures for registration. Subject to refusal or invalidation (see below), an appellation of origin which has been the subject of an international registration is to be ensured protection from the date of the international registration in each contracting country which has not issued a refusal. However, a contracting country may declare that protection is ensured in that country from a different date, which may not be later than the date of expiry of the one-year refusal period.

The international registration of an appellation of origin assures it of protection, without any need for renewal, for as long as the appellation is protected in the country of origin (see paragraph 8, above).

However, the competent authorities of the member countries that have received notice of the registration of an appellation of origin have the right to refuse to protect it in their territory. Such a refusal of protection has to be the subject of a declaration to that effect, which has to meet two requirements:

The first is a time requirement: the refusal has to be notified to the International Bureau within a period of one year from the date of receipt by that country of the notice of registration.
The second is a requirement regarding content: the declaration of refusal has to specify the grounds for refusal. For instance, a country may refuse to protect an appellation of origin because it considers that the appellation has already acquired a generic character in its territory in relation to the product to which it refers or because it considers that the geographical designation does not conform to the definition of an appellation of origin in the Lisbon Agreement or because the appellation would conflict with a trademark or other right already protected in the country concerned.

Refusals are not necessarily cast in stone. If a contracting country that has issued a refusal subsequently decides to withdraw the declaration of refusal, procedures are foreseen under the Lisbon system for having such withdrawals recorded in the International Register.

Since January 1, 2010, a contracting country has the option to issue, instead of tacitly accepting the protection in its territory of a given appellation of origin registered under the Agreement, a statement of grant of protection. These statements are not obligatory but can be issued by a Lisbon member country in two situations:

whenever a contracting party is already in a position to know that it will not issue a refusal of protection well before the expiry of the applicable refusal period (one year from the receipt of the notification of registration), it may issue a statement of grant of protection to an appellation of origin;
following a refusal, the competent authority of a contracting country which has notified a declaration of refusal to the International Bureau may, instead of notifying a withdrawal of refusal, send to the International Bureau a statement to the effect that protection is granted to the appellation of origin that is the subject of an international registration in the contracting country concerned.

And, if no declaration of refusal is submitted but the effects of an international registration are, subsequently, invalidated in a contracting country and the invalidation is no longer subject to appeal, the competent authority of the country concerned is to notify the International Bureau accordingly. Following such a notification, the International Bureau enters the invalidation in the International Register and sends a copy of the notification to the competent authority of the country of origin.