Common Regulations under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
and the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

as adopted on October 2, 2018

List of Rules

 

Chapter I
Introductory and General Provisions

Rule 1
Definitions

(1) [Abbreviated Expressions]  For the purposes of these Regulations, unless expressly stated otherwise:

(i) "Geneva Act" means the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications of May 20, 2015;

(ii) abbreviated expressions which are used in these Regulations and are defined in Articles 1 and 2(1) of the Geneva Act shall have the same meaning as in that Act;

(iii) whenever the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, is applicable rather than the 1967 Act, any reference to the 1967 Act shall be understood to refer to the Lisbon Agreement of October 31, 1958;

(iv) "Rule" refers to a rule of these Regulations;

(v) "Administrative Instructions" means the Administrative Instructions referred to in Rule 24;

(vi) "Official Form" means a form drawn up by the International Bureau;

(vii) "communication" means any application or any request, declaration, notification, invitation or information relating to or accompanying an application or an international registration that is addressed to a Competent Authority, the International Bureau, or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act; 

(viii) "application governed by the 1967 Act" means an application that is filed under the 1967 Act where the mutual relations of the Contracting Parties involved are governed by the 1967 Act;

(ix) "application governed by the Geneva Act" means an application that is filed under the Geneva Act where the mutual relations of the Contracting Parties involved are governed by the Geneva Act;

(x) "refusal" means the declaration referred to in Article 5(3) of the 1967 Act or in Article 15 of the Geneva Act.

(2)[1]  [Correspondence Between Some Expressions Used in the 1967 Act and the Geneva Act]  For the purposes of these Regulations,

(i) reference to "Contracting Party" shall be deemed, where appropriate, to include a reference to "country" as referred to in the 1967 Act;

(ii) reference to "Contracting Party of Origin" shall be deemed, where appropriate, to include a reference to "country of origin" as referred to in the 1967 Act;

(iii) reference to "publication" in Rule 19 shall be deemed, where appropriate, to include a reference to a publication in the periodical referred to in Article 5(2) of the 1967 Act, whatever the medium used for its publication.

 

Rule 2
Calculation of Time Limits

(1) [Periods Expressed in Years]  A period expressed in years shall expire in the subsequent year on the same day and month as the day and month of the event from which the period starts to run, except that, where the event occurred on February 29, the period shall expire on February 28 of the subsequent year.

(2) [Periods Expressed in Months]  A period expressed in months shall expire in the relevant subsequent month on the same day as the day of the event from which the period starts to run, except that, where the relevant subsequent month has no day with the same number, the period shall expire on the last day of that month.

(3) [Expiry on a Day Which Is Not a Working Day for the International Bureau or a Competent Authority]  If the period of a time limit applying to the International Bureau or a Competent Authority expires on a day which is not a working day for the International Bureau or a Competent Authority, the period shall, notwithstanding paragraphs (1) and (2), expire for the International Bureau or the Competent Authority, as the case may be, on the first subsequent working day.

 

Rule 3
Working Languages

(1) [Application]  The application shall be in English, French or Spanish.

(2) [Communications Subsequent to the Application]  Any communication concerning an application or an international registration shall be in English, French or Spanish, at the choice of the Competent Authority concerned or, in the case of Article 5(3) of the Geneva Act, at the choice of the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act.  Any translation needed for the purposes of these procedures shall be made by the International Bureau.

(3) [Entries in the International Register and Publication]  Entries in the International Register and publication of such entries by the International Bureau shall be in English, French and Spanish.  The translations needed for those purposes shall be made by the International Bureau.  However, the International Bureau shall not translate the appellation of origin or the geographical indication.

(4) [Transliteration of the Appellation of Origin or Geographical Indication]  Where the application contains a transliteration of the appellation of origin or the geographical indication in accordance with Rule 5(2)(b), the International Bureau shall not check whether the transliteration is correct.

(5) [Translations of the Appellation of Origin for Applications Governed by the 1967 Act]  Where an application governed by the 1967 Act contains one or more translations of the appellation of origin, in accordance with Rule 5(6)(v), the International Bureau shall not check whether the translations are correct.

 

Rule 4
Competent Authority

(1) [Notification to the International Bureau]  Each Contracting Party shall notify the International Bureau of the name and contact details of its Competent Authority, i.e. the authority it has designated to present applications and other communications to, and receive communications from, the International Bureau.

(2) [One Authority or Different Authorities]  The notification referred to in paragraph (1) shall, preferably, indicate a single Competent Authority.  When a Contracting Party notifies different Competent Authorities, this notification shall clearly indicate their respective competence in respect of the presentation of applications and other communications to, and the receipt of communications from, the International Bureau.

(3) [Information on Applicable Procedures]  The Competent Authority shall make available information on the applicable procedures in its territory to challenge and enforce rights in appellations of origin and geographical indications.

(4) [Modifications] Contracting Parties shall notify the International Bureau of any change in the particulars referred to in paragraphs (1) and (3).  However, the International Bureau may ex officio take cognizance of a change in the absence of a notification where it has clear indications that such a change has taken place.

 

Chapter II
Application and International Registration

Rule 5
Requirements Concerning the Application

(1) [Filing]  The application shall be filed with the International Bureau on the Official Form provided to that end and shall be signed by the Competent Authority presenting it or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act.

(2) [Application – Mandatory Contents]

(a) The application shall indicate:

(i) the Contracting Party of Origin;

(ii) the Competent Authority presenting the application or, in the case of Article 5(3) of the Geneva Act, contact details of the beneficiaries or of the natural person or legal entity referred to in Article 5(2)(ii) of that Act;

(iii) the beneficiaries, designated collectively or, where collective designation is not possible, by name, or in the case of an application governed by the Geneva Act the natural person or legal entity having legal standing under the law of the Contracting Party of Origin to assert the rights of the beneficiaries or other rights in the appellation of origin or the geographical indication;

(iv) the appellation of origin or the geographical indication for which registration is sought, in the official language of the Contracting Party of Origin or, where the Contracting Party of Origin has more than one official language, in the official language or languages in which the appellation of origin or the geographical indication is contained in the registration, act or decision, by virtue of which protection is granted in the Contracting Party of Origin [2];

(v) the good or goods to which the appellation of origin, or the geographical indication, applies, as precisely as possible;

(vi) the geographical area of production or the geographical area of origin of the good or goods;

(vii) the identifying details of the registration, including its date and number if applicable, of the legislative or administrative act, or of the judicial or administrative decision, by virtue of which protection is granted to the appellation of origin, or to the geographical indication, in the Contracting Party of Origin.

(b) If they are not in Latin characters, the application shall include a transliteration of the names of the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of the Geneva Act, of the geographical area of production or the geographical area of origin, and of the appellation of origin or the geographical indication for which registration is sought.  The transliteration shall use the phonetics of the language of the application [2].

(c) The application shall be accompanied by the registration fee and any other fees, as specified in Rule 8.

(3) [Application Governed by the Geneva Act – Particulars Concerning the Quality, Reputation or Characteristic(s)]

(a) To the extent that a Contracting Party of the Geneva Act requires that, for the protection of a registered appellation of origin or geographical indication in its territory, the application governed by the Geneva Act further indicate particulars concerning, in the case of an appellation of origin, the quality or characteristics of the good and its connection with the geographical environment of the geographical area of production, and, in the case of a geographical indication, the quality, reputation or other characteristic of the good and its connection with the geographical area of origin, it shall notify that requirement to the Director General.

(b) In order to meet such a requirement, particulars as referred to in subparagraph (a) shall be provided in a working language, but they shall not be translated by the International Bureau.

(c) An application that is not in accordance with a requirement as notified by a Contracting Party under subparagraph (a) shall, subject to Rule 6, have the effect that protection is renounced in respect of that Contracting Party.

(4) [Application Governed by the Geneva Act – Signature and/or Intention to Use]

(a) To the extent that a Contracting Party of the Geneva Act requires that for protection of a registered appellation of origin or geographical indication the application governed by the Geneva Act be signed by a person having legal standing to assert the rights conferred by such protection, it shall notify that requirement to the Director General.

(b) To the extent that a Contracting Party requires that for protection of a registered appellation of origin or geographical indication the application governed by the Geneva Act be accompanied by a declaration of intention to use the registered appellation of origin or geographical indication in its territory or a declaration of intention to exercise control over the use by others of the registered appellation of origin or geographical indication in its territory, it shall notify that requirement to the Director General.

(c) An application governed by the Geneva Act that is not signed in accordance with subparagraph (a), or that is not accompanied by a declaration indicated in subparagraph (b), shall, subject to Rule 6, have the effect that protection is renounced in respect of the Contracting Party requiring such signature or declaration, as notified under subparagraphs (a) and (b).

(5) [Application Governed by the Geneva Act – Protection Not Claimed for Certain Elements of the Appellation of Origin or the Geographical Indication]  The application governed by the Geneva Act shall indicate whether or not, to the best knowledge of the applicant, the registration, the legislative or administrative act, or the judicial or administrative decision, by virtue of which protection is granted to the appellation of origin, or to the geographical indication, in the Contracting Party of Origin, specifies that protection is not granted for certain elements of the appellation of origin or the geographical indication.  Any such elements shall be indicated in the application in a working language and in the official language or languages of the Contracting Party of Origin referred to in paragraph (2)(a)(iv), together with any transliteration referred to in paragraph (2)(b).

(6) [Application – Optional Contents]

(a) The application may indicate or contain:

(i) the addresses of the beneficiaries or, in the case of an application governed by the Geneva Act, and without prejudice to paragraph (2)(a)(ii), the natural person or legal entity referred to in Article 5(2)(ii) of that Act;

(ii) a declaration that protection is renounced in one or more Contracting Parties;

(iii) a copy in the original language of the registration, the legislative or administrative act, or the judicial or administrative decision, by virtue of which protection is granted to the appellation of origin or the geographical indication in the Contracting Party of Origin;

(iv) a statement to the effect that protection is not claimed for certain elements of the appellation of origin for applications governed by the 1967 Act, or for certain elements, other than those referred to in paragraph (5), of the appellation of origin or the geographical indication for applications governed by the Geneva Act;

(v) one or more translations of the appellation of origin, in as many languages as the Competent Authority of the country of origin wishes for applications governed by the 1967 Act;

(vi) any further information the Competent Authority of the Contracting Party of Origin that is party to the 1967 Act wishes to provide concerning the protection granted to the appellation of origin in that country, such as additional particulars of the area of production of the product and a description of the connection between the quality or characteristics of the good and its geographical environment.

(b) Notwithstanding Rule 3(3), particulars as referred to in subparagraph (a)(i) and (vi) shall not be translated by the International Bureau.

 

Rule 6
Irregular Applications

(1) [Examination of the Application and Correction of Irregularities]

(a) Subject to paragraph (2), if the International Bureau finds that an application does not satisfy the conditions set out in Rule 3(1) or Rule 5, it shall defer registration and invite the Competent Authority or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act, to remedy the irregularity found within a period of three months from the date on which the invitation was sent.

(b) If the irregularity found is not corrected within two months of the date of the invitation referred to in subparagraph (a), the International Bureau shall send a reminder of its invitation.  The sending of such a reminder shall have no effect on the three-month period referred to in subparagraph (a).

(c) If the correction of the irregularity is not received by the International Bureau within the three-month period referred to in subparagraph (a), the application shall, subject to subparagraph (d), be rejected by the International Bureau, which shall inform the Competent Authority or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority, accordingly.

(d) In the case of an irregularity with respect to a requirement based on a notification made under Rule 5(3) or (4), or on a declaration made under Article 7(4) of the Geneva Act, if the correction of the irregularity is not received by the International Bureau within the three-month period referred to in subparagraph (a), the protection resulting from the international registration shall be considered to be renounced in the Contracting Party that has made the notification or the declaration.

(e) Where, in accordance with subparagraph (c), the application is rejected, the International Bureau shall refund the fees paid in respect of the application, after deduction of an amount corresponding to half the registration fee referred to in Rule 8.

(2) [Application Not Considered as Such]  If the application is not filed by the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act, it shall not be considered as such by the International Bureau and shall be returned to the sender.

 

Rule 7
Entry in the International Register

(1) [Registration]

(a) Where the International Bureau finds that the application satisfies the conditions set out in Rules 3(1) and 5, it shall enter the appellation of origin or the geographical indication in the International Register.

(b) The International Bureau shall indicate per Contracting Party whether the international registration is governed by the Geneva Act or by the Lisbon Agreement of October 31, 1958, or the 1967 Act.

(2) [Contents of the Registration]  The international registration shall contain or indicate:

(i) all the particulars given in the application;

(ii) the language in which the International Bureau received the application;

(iii) the number of the international registration;

(iv) the date of the international registration.

(3) [Certificate and Notification]  The International Bureau shall:

(i) send a certificate of international registration to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, to the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act that requested the registration; and

(ii) notify the international registration to the Competent Authority of each Contracting Party.

(4) [Implementation of Articles 29(4) and 31(1) of the Geneva Act]

(a) In case of the ratification of, or accession to, the Geneva Act by a State that is party to the 1967 Act, Rules 5(2) to (4) shall apply mutatis mutandis with regard to international registrations or appellations of origin effective under the 1967 Act in respect of that State.  The International Bureau shall verify with the Competent Authority concerned any modifications to be made, in view of the requirements of Rules 3(1) and 5(2) to (4), for the purpose of their registration under the Geneva Act and shall notify international registrations thus effected to all other Contracting Parties that are party to the Geneva Act.  Modifications shall be subject to payment of the fee specified in Rule 8(1)(ii).

(b) Any refusal or invalidation issued by a Contracting Party of the Geneva Act and of the 1967 Act shall remain effective under the Geneva Act in respect of an international registration referred to in subparagraph (a), unless the Contracting Party notifies a withdrawal of refusal under Article 16 of the Geneva Act or a statement of grant of protection under Article 18 of the Geneva Act.

(c) Where subparagraph (b) does not apply, any Contracting Party of the Geneva Act and of the 1967 Act shall, upon receipt of a notification under subparagraph (a), continue to protect the appellation of origin concerned thenceforth also under the Geneva Act, unless the Contracting Party indicates otherwise within the time period specified in Article 5(3) of the 1967 Act and, for its remainder, in Article 15(1) of the Geneva Act.  Any period granted under Article 5(6) of the 1967 Act and still effective at the time the notification under subparagraph (a) is received shall, for its remainder, be subject to the provisions of Article 17 of the Geneva Act.

(d) The Competent Authority of a Contracting Party of the Geneva Act but not of the 1967 Act which receives a notification under subparagraph (a) may, in accordance with Article 15 of the Geneva Act, notify the International Bureau of the refusal of the effects of any of those international registrations in its territory.  The refusal shall be addressed to the International Bureau by such Competent Authority within the period specified in Rule 9(1)(b) and (c).  Rules 6(1)(d) and 9 to 12 shall apply mutatis mutandis.

 

Rule 7bis
Date of International Registration Effected Under the 1967 Act and Date of Its Effects

(1) [Date of International Registration]

(a) Subject to subparagraph (b), the date of the international registration for an application filed under the 1967 Act shall be the date on which the application was received by the International Bureau.

(b) Where the application does not contain all the following particulars:

(i) the Contracting Party of Origin;

(ii) the Competent Authority presenting the application;

(iii) the details identifying the beneficiaries;

(iv) the appellation of origin for which international registration is sought;

(v) the good or goods to which the appellation of origin applies;

the date of the international registration shall be the date on which the last of the missing particulars is received by the International Bureau.

(2) [Date of Effects of International Registration]

(a) Subject to subparagraph (b) and to paragraph (3), an appellation of origin that is the subject of an international registration effected under the 1967 Act shall, in each Contracting Party of the 1967 Act that has not refused in accordance with Article 5(3) of the 1967 Act the protection of the appellation of origin, or that has sent to the International Bureau a statement of grant of protection in accordance with Rule 12, be protected from the date of the international registration.

(b) A Contracting Party of the 1967 Act may, in a declaration, notify the Director General that, in accordance with its legislation, a registered appellation of origin referred to in subparagraph (a) is protected from a date that is mentioned in the declaration, which date shall however not be later than the date of expiry of the period of one year referred to in Article 5(3) of the 1967 Act.

(3) [Date of Effects of International Registration Following Adhesion  to the Geneva Act] Following the ratification of, or accession to, the Geneva Act by a Contracting Party of Origin that is party to the 1967 Act, an appellation of origin that is the subject of an international registration effected under the 1967 Act shall, in each Contracting Party that is party to the Geneva Act but not to the 1967 Act and that has not refused protection in accordance with Article 15 of the Geneva Act, or that has sent to the International Bureau a statement of grant of protection in accordance with Article 18 of the Geneva Act, and in the absence of any irregularity under Rule 6(1)(d), be protected from the date on which the ratification of, or accession to, the Geneva Act by the Contracting Party of Origin becomes effective, subject to Article 6(5)(b) of the Geneva Act.

 

Rule 8
Fees

(1) [Amount of Fees]  The International Bureau shall collect the following fees, payable in Swiss francs:

(i) fee for international registration [*] - 1000

(ii) fee for each modification of an international registration [*] - 500

(iii) fee for providing an extract from the International Register - 150

(iv) fee for providing an attestation or any other written information concerning the contents of the International Register - 100

(v) individual fees as referred to in paragraph (2).

(2) [Establishment of the Amount of Individual Fees for Applications Governed by the Geneva Act]

(a) Where a Contracting Party of the Geneva Act makes a declaration as referred to in Article 7(4) of the Geneva Act that it wants to receive an individual fee in relation to an application governed by the Geneva Act, as referred to in that provision, the amount of such fee shall be indicated in the currency used by the Competent Authority.

(b) Where the fee is indicated in the declaration referred to in subparagraph (a) in a currency other than Swiss currency, the Director General shall, after consultation with the Competent Authority of the Contracting Party, establish the amount of the fee in Swiss currency on the basis of the official exchange rate of the United Nations.

(c) Where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss currency and the currency in which the amount of an individual fee has been indicated by a Contracting Party is higher or lower by at least 5 per cent than the last exchange rate applied to establish the amount of the fee in Swiss currency, the Competent Authority of that Contracting Party may ask the Director General to establish a new amount of the fee in Swiss currency according to the official exchange rate of the United Nations prevailing on the day preceding the day on which the request is made.  The Director General shall proceed accordingly.  The new amount shall be applicable as from a date which shall be fixed by the Director General, provided that such date is between one and two months after the date of the publication of the said amount on the website of the Organization.

(d) Where, for more than three consecutive months, the official exchange rate of the United Nations between the Swiss currency and the currency in which the amount of an individual fee has been indicated by a Contracting Party is lower by at least 10 per cent than the last exchange rate applied to establish the amount of the fee in Swiss currency, the Director General shall establish a new amount of the fee in Swiss currency according to the current official exchange rate of the United Nations.  The new amount shall be applicable as from a date which shall be fixed by the Director General, provided that such date is between one and two months after the date of the publication of the said amount on the website of the Organization.

(3) [Crediting of Individual Fees for Applications Governed by the Geneva Act to the Accounts of the Contracting Parties Concerned That Are Party to the Geneva Act] Any individual fee paid to the International Bureau in respect of a Contracting Party of the Geneva Act shall be credited to the account of that Contracting Party with the International Bureau within the month following the month in the course of which the recording of the international registration for which that fee has been paid was effected.

(4) [Obligation to Use Swiss Currency]  All payments made under these Regulations to the International Bureau shall be in Swiss currency irrespective of the fact that, where the fees are paid through the Competent Authority, such Competent Authority may have collected those fees in another currency.

(5) [Payment]

(a) Subject to subparagraph (b), the fees shall be paid directly to the International Bureau.

(b) The fees payable in connection with an application may be paid through the Competent Authority if the Competent Authority accepts to collect and forward such fees and the beneficiaries so wish.  Any Competent Authority which accepts to collect and forward such fees shall notify that fact to the Director General.

(6) [Modes of Payment]  Fees shall be paid to the International Bureau in accordance with the Administrative Instructions.

(7) [Indications Accompanying the Payment]  At the time of the payment of any fee to the International Bureau, an indication must be given of the appellation of origin or the geographical indication concerned and the purpose of the payment.

(8) [Date of Payment]

(a) Subject to subparagraph (b), any fee shall be considered to have been paid to the International Bureau on the day on which the International Bureau receives the required amount.

(b) Where the required amount is available in an account opened with the International Bureau and that Bureau has received instructions from the holder of the account to debit it, the fee shall be considered to have been paid to the International Bureau on the day on which the International Bureau receives an application or a request for the recording of a modification.

(9) [Change in the Amount of the Fees]  Where the amount of any fee is changed, the amount valid on the date on which the fee was received by the International Bureau shall be applicable.

(10) [Safeguard of the 1967 Act]

(a) Notwithstanding paragraph (1)(v), a declaration made under Article 7(4) of the Geneva Act, by a Contracting Party of the Geneva Act and the 1967 Act, shall have no effect in the relations with another Contracting Party that is party to the Geneva Act and the 1967 Act.

(b)  The Assembly may, by a three-fourths majority, repeal subparagraph (a), or restrict the scope of subparagraph (a).  Only Contracting Parties of the Geneva Act and the 1967 Act shall have the right to vote.

 

Chapter III
Refusal and Other Actions in Respect of International Registration

Rule 9
Refusal

(1) [Notification to the International Bureau]

(a) A refusal shall be notified to the International Bureau by the Competent Authority of the concerned Contracting Party and shall be signed by that Competent Authority.

(b) The refusal shall be notified within a period of one year from the receipt of the notification of the international registration under Article 5(2) of the 1967 Act or under the Article 6(4) of the Geneva Act.  In the case of Article 29(4) of the Geneva Act, this time limit may be extended by another year.

(c) Unless demonstrated to the contrary by the Competent Authority referred to in subparagraph (a), the notification of an international registration shall be deemed to have been received by the Competent Authority 20 days after the date indicated in the notification.

(2) [Contents of the Notification of Refusal]  A notification of refusal shall indicate or contain:

(i) the Competent Authority notifying the refusal;

(ii) the number of the relevant international registration, preferably accompanied by further information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin or the indication constituting the geographical indication;

(iii) the grounds on which the refusal is based;

(iv) where the refusal is based on the existence of a prior right, the essential particulars of that prior right and, in particular, if it is constituted by a national, regional or international trademark application or registration, the date and number of such application or registration, the priority date (where appropriate), the name and address of the holder, a reproduction of the trademark, together with the list of relevant goods and services given in the trademark application or registration, it being understood that the list may be submitted in the language of the said application or registration;

(v) where the refusal concerns only certain elements of the appellation of origin, or the geographical indication, an indication of the elements that it concerns;

(vi) the judicial or administrative remedies available to contest the refusal, together with the applicable time limits.

(3) [Entry in the International Register and Notifications by the International Bureau]  Subject to Rule 10(1), the International Bureau shall enter in the International Register any refusal, together with the date on which the notification of refusal was sent to the International Bureau, and shall communicate a copy of the notification of refusal to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

 

Rule 10
Irregular Notification of Refusal

(1) [Notification of Refusal Not Considered as Such]

(a) A notification of refusal shall not be considered as such by the International Bureau:

(i) if it does not indicate the number of the international registration concerned, unless other information given in the notification enables the registration to be identified without ambiguity;

(ii) if it does not indicate any ground for refusal;

(iii) if it is sent to the International Bureau after the expiry of the relevant time limit referred to in Rule 9(1);

(iv) if it is not notified to the International Bureau by the Competent Authority.

(b) Where subparagraph (a) applies, the International Bureau shall inform the Competent Authority that submitted the notification of refusal that the refusal is not considered as such by the International Bureau and has not been entered in the International Register, shall state the reasons therefore and shall, unless it is unable to identify the international registration concerned, communicate a copy of the notification of refusal to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

(2) [Irregular Notification]  If the notification of refusal contains an irregularity other than those referred to in paragraph (1), the International Bureau shall nevertheless enter the refusal in the International Register and shall communicate a copy of the notification of refusal to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting party of Origin.  At the request of that Competent Authority or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act, the International Bureau shall invite the Competent Authority that submitted the notification of refusal to regularize the notification without delay.

 

Rule 11
Withdrawal of Refusal

(1) [Notification to the International Bureau]  A refusal may be withdrawn, in part or in whole, at any time by the Competent Authority that notified it.  The withdrawal of a refusal shall be notified to the International Bureau by the relevant Competent Authority and shall be signed by such authority.

(2) [Contents of the Notification]  The notification of withdrawal of a refusal shall indicate:

(i) the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin or the indication constituting the geographical indication;

(ii) the reason for the withdrawal and, in case of a partial withdrawal, the particulars referred to in Rule 9(2)(v);

(iii) the date on which the refusal was withdrawn.

(3) [Entry in the International Register and Notifications by the International Bureau]  The International Bureau shall enter in the International Register any withdrawal referred to in paragraph (1) and shall communicate a copy of the notification of withdrawal to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

 

Rule 12
Grant of Protection

(1) [Optional Statement of Grant of Protection]

(a) The Competent Authority of a Contracting Party which does not refuse the effects of an international registration may, within the time limit referred to in Rule 9(1), send to the International Bureau a statement confirming that protection is granted to the appellation of origin, or the geographical indication, that is the subject of an international registration.

(b) The statement of grant of protection shall indicate:

(i) the Competent Authority of the Contracting Party making the statement;

(ii) the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin, or the indication constituting the geographical indication; and

(iii) the date of the statement.

(2) [Optional Statement of Grant of Protection Following a Refusal]

(a) Where a Competent Authority that has previously submitted a notification of refusal wishes to withdraw that refusal, it may, instead of notifying the withdrawal of refusal in accordance with Rule 11(1), send to the International Bureau a statement to the effect that protection is granted to the relevant appellation of origin or geographical indication.

(b) The statement of grant of protection shall indicate:

(i) the Competent Authority of the Contracting Party making the statement;

(ii) the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin, or the indication constituting the geographical indication;

(iii) the reason for the withdrawal and, in case of a grant of protection that amounts to a partial withdrawal of refusal, the particulars referred to in Rule 9(2)(v); and

(iv) the date on which protection was granted.

(3) [Entry in the International Register and Notifications by the International Bureau]  The International Bureau shall enter in the International Register any statement of grant of protection referred to in paragraphs (1) or (2) and communicate a copy of such statement to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

 

Rule 13
Invalidation of the Effects of an International Registration in a Contracting Party

(1) [Notification of Invalidation to the International Bureau]  Where the effects of an international registration are invalidated in a Contracting Party, in whole or in part, and the invalidation is no longer subject to appeal, the Competent Authority of the concerned Contracting Party shall transmit to the International Bureau a notification of invalidation.  The notification shall indicate or contain:

(i) the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin, or the indication constituting the geographical indication;

(ii) the authority that pronounced the invalidation;

(iii) the date on which the invalidation was pronounced;

(iv) where the invalidation is partial, the particulars referred to in Rule 9(2)(v);

(v) the grounds on the basis of which the invalidation was pronounced;

(vi) a copy of the decision that invalidated the effects of the international registration.

(2) [Entry in the International Register and Notifications by the International Bureau]  The International Bureau shall enter the invalidation in the International Register together with the particulars referred to in items (i) to (v) of paragraph (1) and shall communicate a copy of the notification to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

 

Rule 14
Transitional Period Granted to Third Parties

(1) [Notification to the International Bureau]  Where a third party has been granted a defined period of time in which to terminate the use of a registered appellation of origin, or a registered geographical indication, in a Contracting Party, in accordance with Article 5(6) of the 1967 Act or Article 17(1) of the Geneva Act, the Competent Authority of that Contracting Party shall notify the International Bureau accordingly.  The notification shall be signed by that Authority and shall indicate:

(i) the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin, or the indication constituting the geographical indication;

(ii) the identity of the third party concerned;

(iii) the period granted to the third party, preferably accompanied by information about the scope of the use during the transitional period;

(iv) the date from which the defined period begins, it being understood that the date may not be later than one year and three months from the receipt of the notification of international registration under Article 5(2) of the 1967 Act or Article 6(4) of the Geneva Act or, in the case of Article 29(4) of the Geneva Act, no later than two years and three months from such receipt.

(2) [Duration Under Article 17 of the Geneva Act]  The duration of the period granted to a third party under Article 17 of the Geneva Act shall not be longer than 15 years, it being understood that the period may depend on the specific situation of each case and that a period longer than ten years would be exceptional.

(3) [Entry in the International Register and Notifications by the International Bureau]  Subject to the notification referred to in paragraph (1) being sent by the Competent Authority to the International Bureau before the date referred to in paragraph (1)(iv), the International Bureau shall enter such notification in the International Register together with the particulars shown therein and shall communicate a copy of the notification to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act as well as the Competent Authority of the Contracting Party of Origin.

 

Rule 15
Modifications

(1) [Permissible Modifications] The following modifications may be recorded in the International Register:

(i) the addition or deletion of a beneficiary or some beneficiaries;

(ii) a modification of the names or addresses of the beneficiaries or of the natural person or legal entity referred to in Article 5(2)(ii) of the Geneva Act;

(iii) a modification of the limits of the geographical area of production or the geographical area of origin of the good or goods to which the appellation of origin, or the geographical indication, applies;

(iv) a modification relating to the legislative or administrative act, the judicial or administrative decision, or the registration referred to in Rule 5(2)(a)(vii);

(v) a modification relating to the Contracting Party of Origin that does not affect the geographical area of production or the geographical area of origin of the good or goods to which the appellation of origin, or the geographical indication, applies;

(vi) a modification under Rule 16.

(2) [Procedure]

(a) A request for entry of a modification referred to in paragraph (1) shall be presented to the International Bureau and shall be signed by the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act, and shall be accompanied by the fee specified in Rule 8.

(b) A request for entry of a modification referred to in paragraph (1) shall, where it concerns a newly established trans-border geographical area of production or geographical area of origin as referred to in Article 1(xiii) of the Geneva Act, be presented to the International Bureau and shall be signed by the commonly designated Competent Authority as referred to in Article 5(4) of the Geneva Act.

(3) [Entry in the International Register and Notification to the Competent Authorities]  The International Bureau shall enter in the International Register any modification requested in accordance with paragraphs (1) and (2) together with the date of receipt of the request by the International Bureau, confirm the entry to the Competent Authority that requested the modification, and communicate such modification to the Competent Authorities of the other Contracting Parties.

(4) [Optional Alternative for International Registration Effected Under the Geneva Act]  In the case of Article 5(3) of the Geneva Act, paragraphs (1) to (3) shall apply mutatis mutandis, it being understood that a request from the beneficiaries or from the natural person or legal entity referred to in Article 5(2)(ii) of the Geneva Act must indicate that the change is requested because of a corresponding change to the registration, the legislative or administrative act, or the judicial or administrative decision, on the basis of which the appellation of origin, or the geographical indication, had been granted protection in the Contracting Party of Origin that made a declaration in accordance with Article 5(3) of the Geneva Act; and that the entry of the modification in the International Register shall be confirmed to the concerned beneficiaries or natural person or legal entity by the International Bureau, which shall also inform the Competent Authority of the Contracting Party of Origin that made a declaration in accordance with Article 5(3) of the Geneva Act.

 

Rule 16
Renunciation of Protection

(1) [Notification to the International Bureau]  The Competent Authority of the Contracting Party of Origin, or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act or the Competent Authority of the Contracting Party of Origin, may at any time notify the International Bureau that protection of the appellation of origin, or the geographical indication, is renounced, in whole or in part, in respect of one or some but not all of the Contracting Parties.  The notification of renunciation of protection shall state the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin, or the indication constituting the geographical indication and shall be signed by the Competent Authority or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act.

(2) [Withdrawal of a Renunciation]

(a) Any renunciation, including a renunciation under Rule 6(1)(d), may be withdrawn, in whole or in part, at any time by the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act or the Competent Authority of the Contracting Party of Origin, subject to payment of the fee for a modification and, in the case of a renunciation under Rule 6(1)(d), the correction of the irregularity.

(b) Subject to Article 6(5)(b) of the Geneva Act, in each Contracting Party in which a renunciation has effect, a registered appellation of origin or geographical indication shall be protected from the date on which:

(i) the withdrawal of renunciation is received by the International Bureau in the case of a renunciation referred to in paragraph (1); and

(ii) the correction of the irregularity is received by the International Bureau in the case of a renunciation referred to in Rule 6(1)(d).

(3) [Entry in the International Register and Notification to the Competent Authorities]  The International Bureau shall enter in the International Register any renunciation of protection referred to in paragraph (1), or any withdrawal of a renunciation referred to in paragraph (2), confirm the entry to the Competent Authority of the Contracting Party of Origin and, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity, while also informing the Competent Authority of the Contracting Party of Origin, and shall communicate the entry of such modification in the International Register to the Competent Authorities of each Contracting Party to which the renunciation, or the withdrawal of the renunciation, relates.

(4) [Application of Rules 9 to 12]  The Competent Authority of a Contracting Party that receives a notification of the withdrawal of a renunciation may notify the International Bureau of the refusal of the effects of the international registration in its territory.  The declaration shall be addressed to the International Bureau by such Competent Authority within a period of one year from the date of receipt of the notification by the International Bureau of the withdrawal of the renunciation.  Rules 9 to 12 shall apply mutatis mutandis.

 

Rule 17
Cancellation of an International Registration

(1) [Request for Cancellation]  The Competent Authority of the Contracting Party of Origin, or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act or the Competent Authority of the Contracting Party of Origin, may at any time request the International Bureau to cancel their international registration.  The request for cancellation shall state the number of the international registration concerned, preferably accompanied by other information enabling the identity of the international registration to be confirmed, such as the denomination constituting the appellation of origin or the indication constituting the geographical indication and shall be signed by the Competent Authority or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act.

(2) [Entry in the International Register and Notification to the Competent Authorities]  The International Bureau shall enter in the International Register any cancellation together with the particulars given in the request, confirm the entry to the Competent Authority of the Contracting Party of Origin or, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act, while also informing the Competent Authority of the Contracting Party of Origin, and shall communicate the cancellation to the Competent Authorities of the other Contracting Parties.

 

Rule 18
Corrections Made to the International Register

(1) [Procedure]  If the International Bureau, acting ex officio or at the request of the Competent Authority of the Contracting Party of Origin, finds that the International Register contains an error with respect to an international registration, it shall correct the Register accordingly.

(2) [Optional Alternative for International Registration Under the Geneva Act]  In the case of Article 5(3) of the Geneva Act, a request under paragraph (1) can also be submitted by the beneficiaries or by the natural person or legal entity referred to in Article 5(2)(ii) of that Act.  The beneficiaries or the natural person or legal entity shall be notified by the International Bureau of any correction concerning the international registration.

(3) [Notification of Corrections to the Competent Authorities]  The International Bureau shall notify any correction of the International Register to the Competent Authorities of all Contracting Parties as well as, in the case of Article 5(3) of the Geneva Act, the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act.

(4) [Application of Rules 9 to 12]  Where the correction of an error concerns the appellation of origin or the geographical indication, or the good or goods to which the appellation of origin or the geographical indication applies, the Competent Authority of a Contracting Party has the right to declare that it cannot ensure the protection of the appellation of origin or geographical indication after the correction.  The declaration shall be addressed to the International Bureau by such Competent Authority within a period of one year from the date of receipt of the notification by the International Bureau of the correction.  Rules 9 to 12 shall apply mutatis mutandis.

 

Chapter IV
Miscellaneous Provisions

Rule 19
Publication

The International Bureau shall publish all entries made in the International Register.

 

Rule 20
Extracts from the International Register and
Other Information Provided by the International Bureau

(1) [Information on the Contents of the International Register]  Extracts from the International Register or any other information on the contents of the Register shall be provided by the International Bureau to any person so requesting, on payment of the fee specified in Rule 8.

(2) [Communication of Provisions, Decisions or the Registration Under Which an Appellation of Origin or a Geographical Indication Is Protected]

(a) Any person may request from the International Bureau a copy in the original language of the provisions, the decisions or the registration referred to in Rule 5(2)(a)(vii), on payment of the fee specified in Rule 8.

(b) Where such documents have already been communicated to the International Bureau, the latter shall transmit without delay a copy to the person who has made the request.

(c) If such a document has never been communicated to the International Bureau, the latter shall request a copy of it from the Competent Authority of the Contracting Party of Origin and shall transmit the document, on receipt, to the person who has made the request.

 

Rule 21
Signature

Where the signature of a Competent Authority is required under these Regulations, such signature may be printed or replaced by the affixing of a facsimile or an official seal.

 

Rule 22
Date of Dispatch of Various Communications

Where the notifications referred to in Rules 9(1), 14(1), 16(4) and 18(4) are communicated through a postal service, the date of dispatch shall be determined by the postmark.  If the postmark is illegible or missing, the International Bureau shall treat the communication concerned as if it had been sent 20 days before the date on which it was received.  Where such notifications are sent through a mail delivery service, the date of dispatch shall be determined by the information provided by such delivery service on the basis of the details of the mailing as recorded by it.  Such notifications may also be communicated by facsimile or by electronic means, as provided for in the Administrative Instructions.

 

Rule 23
Modes of Notification by the International Bureau

Any notification by the International Bureau referred to in these Regulations shall be addressed to the Competent Authorities or, in the case of Article 5(3) of the Geneva Act, to the beneficiaries or the natural person or legal entity referred to in Article 5(2)(ii) of that Act by any means enabling the International Bureau to establish that the notification has been received.

 

Rule 24
Administrative Instructions

(1) [Establishment of Administrative Instructions; Matters Governed by Them]

(a) The Director General shall establish Administrative Instructions and may modify them.  Before establishing or modifying the Administrative Instructions, the Director General shall consult the Competent Authorities of the Contracting Parties which have direct interest in the proposed Administrative Instructions or their proposed modification.

(b) The Administrative Instructions shall deal with matters in respect of which these Regulations expressly refer to such Instructions and with details in respect of the application of these Regulations.

(2) [Supervision by the Assembly] The Assembly may invite the Director General to modify any provision of the Administrative Instructions and the Director General shall act upon any such invitation.

(3) [Publication and Effective Date]

(a) The Administrative Instructions and any modification thereof shall be published.

(b) Each publication shall specify the date on which the published provisions become effective.  The dates may be different for different provisions, provided that no provision may be declared effective prior to its publication.

(4) [Conflict with the Act or These Regulations]  In the case of conflict between, on the one hand, any provision of the Administrative Instructions and, on the other hand, any provision of the Act or these Regulations, the latter shall prevail.

 

Rule 25
Entry into Force; Transitional Provisions

(1) [Entry into Force]  These Regulations shall enter into force on [the date of entry into force of these Regulations will coincide with the entry into force of the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications] [3], and shall, as from that date, replace the Regulations under the 1967 Act for the Protection of Appellations of Origin and their International Registration as in force on January 1, 2016 (hereinafter referred as "the Regulations under the Agreement").

(2) [Transitional Provisions]  Notwithstanding paragraph (1),

(i) an application governed by the 1967 Act which was received by the International Bureau before the date referred to in paragraph (1) shall, to the extent that it conforms to the requirements of the Regulations under the 1967 Act, be deemed to conform to the applicable requirements for the purposes of Rule 7;

(ii) a communication of refusal, withdrawal of refusal, statement of grant of protection, notification of invalidation of effects of an international registration in a Contracting Party, transitional period granted to third parties, modification, renunciation of protection, or cancellation of an international registration effected under the 1967 Act which was received by the International Bureau before the date referred to in paragraph (1), shall, to the extent that it conforms to the requirements of the Regulations under the 1967 Act, be deemed to conform to the applicable requirements for the purposes of Rules 9(3), 11(3), 12(3), 13(2), 14(3), 15(3), 16(3) and 17(2), respectively.

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[1] In the English version, reference to "good" shall be deemed, where appropriate, to include a reference to "product", as referred to in the 1967 Act.

[2] The application of Rule 5(2)(a)(iv) and Rule 5(2)(b) is subject to the provisions of Rule 3(3) and (4).

[3] See decision of the Lisbon Union Assembly in document LI/A/34/4.

[*] For an international registration referring to a geographical area located in a least developed country (LDC), in accordance with the lists established by the United Nations, the fee is reduced to 50 per cent of the prescribed amount (rounded to the nearest full figure).  In such case, the fee will amount to 500 Swiss francs for an international registration referring to a geographical area of origin located in an LDC, and to 250 Swiss francs for each modification of an international registration referring to a geographical area of origin located in an LDC.  These fee reductions will apply three years after the entry into force of the Geneva Act.