Irreconcilable Differences? The Geneva Act of the Lisbon Agreement and the Common Law
34 Pages Posted: 18 Jan 2016 Last revised: 11 Feb 2016
Date Written: November 20, 2015
This Article considers whether the Geneva Act (2015) of the 1958 Lisbon Agreement achieved a reconciliation between the common-law approach to protecting certain GIs as trademarks and the (currently) mostly European approach of using a sui generis system to protect GIs. In "Old Lisbon" as in many parts of Europe — and perhaps more strikingly in France — GIs have deep roots in the terroir. And the terroir matters: it is not an exaggeration to say that some countries link terroir to national identity. New World producers see things differently, but they also recognize the value of geographic origin, at least for certain products: Napa Valley wines, Vidalia onions, Idaho potatoes and many other products are sold with symbols identifying their geographic origin.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is directly relevant in this context. TRIPS does three main things in respect of GIs. First, it creates a dual layer of protection for GIs. It arguably provides protections for wines and spirits beyond the traditional trademark law standard.
Second, TRIPS provides a set of rules for the interaction between GIs and (other) trademarks. Third, TRIPS obligates WTO Members to negotiate concerning the establishment of a GI registration and notification system.
No significant progress has been made on the TRIPS register since the entry into force of the TRIPS Agreement in 1995. Part of the issue is that WTO Members pushing for international protection of GIs disagree on the scope and purpose of their effort. Europe's focus has been on the establishment of the TRIPS Article 23.4 register. Other WTO Members, many of them developing countries, have insisted on an extension of the higher level of protection contained in Article 23.1 of TRIPS to products other than wines and spirits. They consider the emphasis in TRIPS on alcoholic beverages to be both culturally discriminatory and a commercial impediment to the ability to collect potentially higher rents associated with GIs on other types of protected products.
No common law jurisdiction is party to the Lisbon Agreement. There are a number of reasons that explain this lack of enthusiasm. Many common law jurisdictions can use trademarks, collective marks, and certification marks to protect geographic symbols and names. This has a number of both normative and administrative implications, including use requirements, possible loss or diminution of right due to acquiescence and abandonment or genericness, and the payment of maintenance fees, to mention just the main ones. This could be described as the gap that needed to be bridged between the Lisbon system and the common law before the Diplomatic Conference of May 2015. Did the Diplomatic Conference that adopted the Geneva Act succeed in building a bridge between the two Lisbons?
To answer this question, this Article begins by briefly explicating the functioning of the Lisbon system and then compares the Lisbon system with the common law system of protection for geographic identifiers as certification marks, with a specific focus on U.S. law. The Article argues that the revised Lisbon Agreement fails to build a solid bridge between the two Lisbons though it may yet succeed in becoming a global GI registry due to exogenous trade pressures.
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