LISBON AGREEMENT

(1958)
Intellectual Property Rights Assignment
Prof. Samrudhee Shah
By – Arunima Ghosh
B.A. LL. B. 3rd year
 A specialized agency of the United Nations mandated
with promoting the protection of intellectual property
 It promotes creativity and innovativeness for economic,
social and cultural development through:
 intellectual property protection worldwide
 creation of infrastructure and environment conducive to understanding the role of
IP for development
 building capacities in developing countries
 international cooperation between governments and other stakeholders

WHAT IS WIPO?
 Balanced evolution of the International Normative Framework for IP
 Provision of Premier Global IP Services
 Facilitating the use of IP for development
 Coordination and Development of Global IP Infrastructure
 World Reference Source for IP Information and Analysis
 International Cooperation on Building Respect for IP
 Addressing IP in Relation to Global Policy Issues
 A Responsive Communications Interface between WIPO, its Member
States and All Stakeholders
 An Efficient Administrative and Financial Support Structure to Enable
WIPO to Deliver its Programs

STRATEGIC GOALS
 Geographical
Indication
(TRIPS)

Appellation
of Origin
(Lisbon)

Indication of Source
(Paris)
WHY PROTECT
GEOGRAPHICAL
INDICATIONS?
 Legal tools that aim to provide valuable information to
consumers
 Information asymmetry between producers and
consumers can drive high quality products out of
the market
 Reputation - a key mechanism for correcting
problems associated with information asymmetry
and enables consumers to reduce their search costs

THE ECONOMIC RATIONALE

 Direct link between certain product characteristics and the
geographical origin makes the GI label valuable to consumers -
products with a GI label are certified to be from given region and meet
pre-determined standards (or product specifications)
 Protects investments made in maintaining quality and reputation
 Investments help consumers distinguish between products
 Provide incentives for companies to invest in quality
 Products benefiting from high reputation that can be recognized by consumers
may carry a premium price
 If collective reputation is positive: GI label can be a powerful tool to signal
quality and enable products to benefit from price premium
 Potential for promoting rural development
 Potential impact on the local economy as a whole (enhancing access to market; increasing job
opportunities; enhancing cohesion among producers; reducing migration from rural areas, etc.)
 Indirect effects on other sectors (e.g. tourism industry)
 May be a part of a broader rural development strategy

 Some non-economic considerations:

 preserving local customs, traditions or traditional
knowledge
 helping to preserve cultural identities
PROTECTION OF
GEOGRAPHICAL
INDICATIONS
 Legislation on unfair competition

 Collective or certification marks

 Sui generis GI system

 Administrative systems (labelling, etc.)

HOW TO PROTECT?
 At the international multilateral level, five treaties are relevant:
 Paris Convention for the Protection of Industrial Property, 1883
 Madrid Agreement on the Repression of False or Deceptive Indications
of Source on Goods (1891)
 Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration, 1958
 Madrid Agreement and Protocol for the International Registration of
Marks (1891 and 1989)
 Agreement on Trade-Related Aspects of Intellectual Property Rights
(TRIPS), 1994

RELEVANT INTERNATIONAL TREATIES

 Goods unlawfully bearing a false indication of the source of the goods must be seized
on importation

 Obligation to assure effective protection against acts of unfair competition: any act of
competition contrary to honest practices in industrial or commercial matters

The following acts, in particular, :

 acts likely to create confusion by any means whatever with the establishment, the goods, or the
industrial or commercial activities, of a competitor
 false allegations in the course of trade likely to discredit the establishment, the goods, or the
activities, of a competitor;
 indications or allegations liable to mislead the public as to the nature, manufacturing process,
characteristics, suitability for their purpose, or quantity, of the goods

PROTECTION OF GIS – RELEVANT

PROVISIONS
 Lisbon Agreement for the Protection of Appellations of Origin and their
International Registration

 Madrid System for the International Registration of Marks

PROTECTION AT THE INTERNATIONAL

LEVEL
 (39 member states)

LISBON AGREEMENT (1958)

 The Lisbon Agreement for the Protection of Appellations of Origin and
their International Registration, signed on 31 October 1958, ensures that in
member countries, appellations of origin receive protection when are protected
in their country of origin. It lays down provisions for what qualifies as an
appellation of origin, protection measures and establishes an International
Register of Appellations of Origin, run by the World Intellectual Property
Organisation. The agreement came into force in 1966, and was revised at
Stockholm (1967) and amended in 1979 and 2015. As of July 2022, 39 states
are party to the convention and 1000 appellations of origin has been
registered.

ABOUT THE AGREEMENT

 The Lisbon Agreement provides for the protection of appellations of origin, that is, 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
geographic environment, including natural and human factors" (Article 2).
 Such denominations are registered by the International Bureau of WIPO in Geneva upon
the request of the competent authority of a Contracting State.
 The International Bureau keeps the International Register of Appellations of Origin and
formally notifies the other Contracting States of the registrations. It also publishes them
in the Lisbon system's official bulletin Appellations of Origin.
 A Contracting State may declare, within one year of receiving the notice of registration,
that it cannot ensure the protection of a registered appellation within its territory
(Article 5(3)). Such a declaration must include grounds for the refusal of protection.
 Contracting States may subsequently withdraw a refusal, according to a procedure
foreseen under the Lisbon system.
 A registered appellation will be protected against usurpation or imitation, even when
used in translation or accompanied by words such as "kind", "type" or the like (Article 3),
and may not be deemed to have become generic in a Contracting State as long as it
continues to be protected in the country of origin (Article 6).
 Since January 2010, Contracting States have had the option to issue a statement of grant
of protection, thus improving communication regarding the status of international
registrations in member countries.
 These statements can be issued by Contracting States that know, well before the expiry
of the one-year refusal period under Article 5(3), that they will not issue a declaration of
refusal of protection; or the statement can take the place of the notification of
withdrawal of a refusal already given.
 Establishes an international register for appellations of
origin and a procedure for their registration

 Provides a definition of appellation of origin:

 the geographical name of a country, region or locality which serves to designate a

product originating therein, the quality and characteristics of which are due exclusively
or essentially to the geographical environment, including natural and human factors
 Any kind of product may be designated - ranging from natural products (e.g. mineral
water, marble) to manufactured products (e.g. crystal-ware, porcelain), including
agricultural, food and handicraft products

PRINCIPLES
Procedure for registration

> Application must be filed with WIPO (in English, French or Spanish)
through the competent authority of the country of origin, on behalf of
the holders of the right to use the appellation of origin
> WIPO registers the AO in the International Register, notifies all the
countries of the Lisbon Union and publishes the AO in bulletin
"Appellations of Origin”
> A country may refuse (totally or partially) protection of the AO if it
notifies WIPO within one year indicating the grounds.

REGISTRATION
 States that have not refused a notified AO within 12 months from receipt of the
notification

 must ensure protection of the appellation against usurpation or imitation, even

if the true origin of the product is stated, or if the appellation is used in translated
form or accompanied by a disclaimer
 cannot deem that the appellation has become generic as long as it remains
protected as an appellation of origin in its country of origin

 Term: Protection of the appellation of origin in each member country that has not
refused protection continues without renewal as long as the appellation is protected as
such in its country of origin
 No renewal is required to maintain the international registration

EFFECTS OF INTERNATIONAL
REGISTRATION
THE PROCEDURE – A SNAPSHOT
Country of origin Appellation protected as such

International
Application
Records in the International Register
INTERNATIONAL Publishes in Bulletin
BUREAU Notifies other members

OTHER MEMBERS examines

12 12
months months
REFUSA NO REFUSAL =
L protection
 Withdrawal of declaration of refusal:
 at any time
 in whole or in part (inter-party negotiation possible)
 Period to terminate use by third parties
 may be granted by competent authority of country
 maximum period two years (negotiation possible)

 Invalidation: before the competent authorities of the

country in which invalidation is sought

AFTER REGISTRATION
 The Lisbon Agreement, concluded in 1958, was revised at Stockholm
in 1967, and amended in 1979. The Lisbon Agreement created a Union
which has an Assembly.
 Every State member of the Union that has adhered to at least the
administrative and final clauses of the Stockholm Act is a member of
the Assembly.
 The Agreement is open to States party to the Paris Convention for the
Protection of Industrial Property (1883). Instruments of ratification or
accession must be deposited with the Director General of WIPO.

SUMMARY
THANK YOU