Lisbon – The International System of Appellations of Origin and Geographical Indications
The Lisbon System is a practical and cost-effective solution for the International Registration of Appellations of Origin (AOs) and Geographical Indications (GIs), offering protection in 40 Contracting Parties, covering up to 70 countries, through a single registration procedure and one set of fees.
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Appellations of Origin (AOs) and Geographical Indications (GIs) are powerful branding tools to address the ever-growing market demand for traditional origin-based quality products. They help to distinguish goods with a specific geographical origin, which possess certain qualities and/or a reputation linked to that origin, from similar products on the market. Oftentimes, goods bearing an AO or a GI represent a substantial share of exports and revenue for many countries, hence the need to protect them in the largest possible number of markets, both domestic and foreign. Like other intellectual property rights, AOs and GIs have a territorial dimension and their legal protection is limited to the jurisdiction(s) where the corresponding right was granted. Moreover, the diversity of legal systems and procedures at the national and regional level often makes it difficult and expensive for AO/GI operators to secure legal recognition and adequate protection of their AOs and GIs in other countries. Hence, there is a need for a globally effective solution, adapted to all legal systems, either national or regional, in the form of a common international protection mechanism.
Convenient and global
The Lisbon System sets a legal framework to facilitate the international protection of AOs and GIs in 38 contracting parties, covering 57 countries in Africa, Asia, Europe, Latin America and the Caribbean, without the difficulties and costs of filing and managing multiple registrations before different authorities. Through a single registration procedure with the World Intellectual Property Organization (WIPO), in one language and with only one set of fees in one currency, the Lisbon System grants registered AOs and GIs protection in several countries, based on the only legally binding international register. The Lisbon System can be used to protect AOs and GIs for any type of product, such as agricultural and foodstuffs, natural, artisanal and even industrial goods (find existing registrations on the Lisbon Express database).
One condition to register AOs/GIs internationally
To qualify for international protection under the Lisbon System, AOs and GIs must be already protected as such in their Contracting Party of Origin, by means of either legislative or administrative provisions, judicial decisions or any form of registration. The Lisbon System leaves ample flexibility on how this protection may be formalized at the national or regional level, which is determined by the applicable domestic legislation of the Contracting Party of Origin (e.g. domestic protection may take place through sui generis or trademark systems, special decrees, labeling or unfair competition laws etc.).
A simple and flexible procedure
After conducting a formal examination of the international application, WIPO notifies the other contracting parties to the Lisbon Agreement or the Geneva Act of the Lisbon Agreement, as applicable, of any new registration received. Each contracting party is then free to decide whether to protect a newly registered AO/GI or to refuse protection in its territory. Refusals can be issued on any substantive ground existing in the national/regional framework and must be notified to WIPO within one year of the notification of the new registration (find more in How to use the Lisbon System).
Sound international protection
Unlike other global intellectual property registration systems, the main advantage of the Lisbon System is that it clearly defines the minimum level of protection to be granted to internationally registered AOs and GIs. Contracting parties are required to protect registered AOs and GIs in their territories against any usurpation and imitation, even if the true origin of the product is stated, or if the AO/GI is used in translated form, or accompanied by terms such as “kind,” “type,” “make,” “imitation” or the like. The Lisbon System also protects registered AOs and GIs against any other misleading practice as to the true origin or nature of the goods. Once registered under the Lisbon System, AOs and GIs can no longer be considered to have become generic terms serving to designate a type of product in those contracting parties that have not refused them protection. The basis for such protection is the only legally binding international register for AOs/GIs, directly enforceable in multiple jurisdictions. This makes the protection particularly effective and considerably eases the burden of proof when AO/GI operators seek to enforce protection of their AOs/GIs abroad.
Unlimited in time (no renewal needed)
Under the Lisbon System, once the AO or GI is registered, the consequent international protection is potentially unlimited in time as there is no need to pay any additional fee to renew the registration. In principle, the international protection lasts as long as the AO/GI remains protected in its Contracting Party of Origin, subject to any refusal within the prescribed term or invalidation of its effects in the territory of a contracting party.
You can use the Lisbon System to protect your Appellation of Origin (AO) or Geographical Indication (GI) internationally if:
- The AO/GI that you want to register is linked to one (or more) of the contracting parties to the Lisbon System: to that end, the geographical area of origin (or production) of the AO/GI needs to be situated in the territory of (at least) one contracting party (i.e.the Contracting Party of Origin); and
- Under the law of the Contracting Party of Origin, you are the beneficiary of the AO/GI (i.e.a natural person or legal entity entitled to use it) or other natural person or legal entity having legal standing to assert the rights of the beneficiaries or other rights in the AO/GI; and
- The AO/GI is already recognized and protected as such in its Contracting Party of Origin by virtue of a domestic legal title, such as a registration, a legislative or administrative act, a judicial or administrative decision (note: the domestic title of protection is the basis and condition for the further validity of the international registration under the Lisbon System).
These prerequisites to use the Lisbon System must be checked against the domestic legislation of the Contracting Party of Origin of the AO/GI. To sum up, the Lisbon System can be used by natural persons or legal entities entitled to use (or assert other rights in) AOs/GIs originating in a contracting party. Unlike other global IP registration systems, the place of residence, nationality or business establishment of the user is not relevant to benefit from the Lisbon System. What matters is the connection between the AO/GI and (at least) one of the contracting parties to the Lisbon System.
How to file an application?
As a first step, beneficiaries or the other persons/entities entitled to assert the rights of the beneficiaries or other rights in the Appellation of Origin (AO) or Geographical Indication (GI) must address their competent authority (find your Competent Authority) to carry out a preliminary check that the prerequisites for registering their AO/GI with the Lisbon System exist. The competent authority may then submit the application to the World Intellectual Property Organization (WIPO) on their behalf, becoming the main contact point for all communications concerning the AO/GI lifecycle (e.g. Refusals, Grants of Protection and so on). Under the Geneva Act, contracting parties may use a specific declaration to authorize beneficiaries and other entitled subjects to file applications directly with WIPO without the intermediation of a competent authority (direct filing). The application must be filed in compliance with the prescribed mandatory requirements, using the Official Form provided to that end, in either English, French, or Spanish, and must be signed by the competent authority or the persons or entities presenting it . Under the Geneva Act, additional declaration‑based requirements (e.g. further information on the AO/GI) may be needed to ensure protection in specific contracting parties demanding them (find more in the full list of declarations). The Geneva Act also introduces the possibility for contracting parties to make a joint application for the registration of an AO/GI originating in a trans-border geographical area (i.e. an area covering adjacent contracting parties) through the designation of a common competent authority.
International registration with the Lisbon System
After a formal examination of the application, WIPO registers the AO or GI in the International Register of the Lisbon System and notifies the new registration to the other contracting parties of the Lisbon Agreement (1958 and 1967 Acts) and/or the Geneva Act of the Lisbon Agreement. The international registration bears the date on which the application was received in due form by WIPO and remains valid without any need for renewal, as long as protection continues to be granted in the Contracting Party of Origin. AOs and GIs registered with the Lisbon System are protected in the jurisdiction of each contracting party to the Lisbon Agreement or the Geneva Act, as applicable, from the date of the international registration (or from the date of adhesion of the contracting party if the adhesion is effective after the date of international registration) if the contracting party has not notified a refusal or has notified a statement of grant of protection.
Refusal of an international registration
Any contracting party can refuse protection to an international registration under three conditions: (1) the refusal must be notified to WIPO within one year from the date of receipt of the notification of registration, (2) the grounds on which the refusal is based must be specified in the declaration of refusal together with (3) the judicial or administrative remedies available to contest the refusal and their applicable time limits. Under the Lisbon System, refusals can be issued on any substantive ground established by the law of a contracting party, although in practice the most common grounds for refusal are prior conflicting rights (such as prior good faith trademarks), genericness and non-compliance of the registered term with the AO or GI definitions established by the Lisbon Agreement or the Geneva Act of the Lisbon Agreement, as applicable.
A refusal may be total (when it concerns the whole of the name of the AO/GI) or partial (when it refers to only certain elements of the name of the AO/GI or, for instance, when protection of the new AO/GI is refused only in respect of a prior conflicting right protected in the said contracting party). A refusal may be either notified to WIPO by a competent authority at the request of an interested party or ex officio if the domestic legislation so permits. Refusals are not irrevocable but can be withdrawn, in whole or in part, at any time by the authority that notified them. Refusals are withdrawn either through a notification of withdrawal or through a notification of grant of protection.
Other events concerning an international registration
Once the AO/GI is registered under the Lisbon System, the validity and duration of its international registration depends on the domestic legal title of protection. AOs and GIs remain protected in the other contracting parties (subject to any refusal) so long as they are protected in their Contracting Party of Origin. Nevertheless, after an international registration is successfully recorded in the International Register and protected in the other contracting parties that have not notified a refusal, other changes may still occur. The effects of an international registration can be invalidated, in whole or in part, in a contracting party. The invalidation, however, can be pronounced only after the beneficiaries have been given the opportunity to defend their rights and the invalidation is no longer subject to appeal. Moreover, the competent authority of the Contracting Party of Origin can submit a request to modify the international registration to WIPO upon the payment of a fee. Such modification may concern the beneficiaries, the geographical area of production (or origin), the domestic legal title of protection, or the Contracting Party of Origin itself. Finally, the competent authority of a contracting party may at any time notify to WIPO a renunciation to protect the AO or GI in one or some (but not all) of the contracting parties, as well as a cancellation of the registration from the International Register altogether. Renunciations, like refusals, can be withdrawn at any point in time.
A system for everyone, everywhere
The Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (“the Geneva Act”) was adopted in 2015 to modernize the Lisbon System (for further details, please refer to the review process). The Geneva Act extends protection to the broader category of Geographical Indications (GIs) in addition to Appellations of Origin (AOs), thus allowing more products (i.e. those not qualifying under the more stringent category of AOs) to benefit from the international protection mechanism offered by the Lisbon System. Furthermore, the Geneva Act opens the Lisbon System to the accession of certain intergovernmental organizations (such as the European Union or the African Intellectual Property Organization (find more in Who can join the Lisbon System?). Thanks to this additional flexibility, Lisbon users from different geographical areas are now able to ensure protection to their AOs/GIs in new important markets.
Effective as always, inclusive as never before
The Geneva Act confirms the effective level of protection already provided by the Lisbon Agreement for AOs and also extends it to GIs. Contracting parties to the Geneva Act must provide the legal means to prevent the use of an internationally registered AO/GI in respect of goods of the same kind, goods of a different kind, or services, under certain conditions. They must also provide the legal means to prevent any use amounting to the imitation of an AO/GI.
Synthesis of Protection Granted under the Geneva Act
The Geneva Act requires contracting parties to provide the legal means to prevent:
(1) Use of the registered AO/GI on goods of the same kind when the goods do not originate in the area of origin or do not comply with other requirements for using the AO/GI;
(2) Use of the registered AO/GI on goods of different kinds or services only under certain conditions (i.e. when a connection with the AO/GI reputation and/or with the AO/GI beneficiaries is implied, diluting or taking unfair advantage of the AO/GI reputation or damaging the interests of the beneficiaries);
(3) Any imitation of the AO/GI, even if the true origin of the goods is indicated or when the AO/GI is translated or used with terms such as “type”, “style”, “kind”, etc. (e.g. “French style”);
(4) Any other misleading practice as to the true origin, provenance or nature of the goods.
Furthermore, under the Geneva Act, contracting parties shall refuse or invalidate the registration of a later trademark if the use of such trademark would result in one of the situations covered by paragraphs Nos. (1), (2) and (3) above. Finally, the Geneva Act confirms the principle that internationally registered AOs and GIs can no longer be considered to have become generic terms in those contracting parties that have not refused them protection. At the same time, the Geneva Act clarifies that where certain elements of the denomination or indication constituting the AO or GI have a generic character in the Contracting Party of Origin, their protection shall not be required in the other contracting parties.
Flexible implementation and modern safeguards
While consolidating the existing scope of protection, the Geneva Act further develops the flexibility of the Lisbon System, taking into account different national and regional means of protection. Contracting parties remain free to choose the type of legislation under which they protect internationally registered AOs and GIs. Hence, maximum flexibility is ensured as to how the international protection standards may be implemented at the domestic level through sui generis or trademark systems or other legal means, provided that national or regional legislations meet the substantive requirements of the Geneva Act. Moreover, the Geneva Act enhances safeguards for prior third party rights (such as personal names, plant varieties and animal breed denominations used in the course of trade) and clarifies the relationship between protected terms and prior good faith trademark rights, taking into account different principles (priority and coexistence) applied at the national and regional level. Finally, the Geneva Act specifies that a contracting party is not required to protect a denomination or indication that, prior to international registration, is already considered generic in its territory.
A more accessible system
The Geneva Act also introduces several procedural innovations aimed at making the Lisbon System more accessible, such as the possibility to submit a direct application to WIPO (direct filing) which is given to the beneficiaries of AOs and GIs (subject to their contracting party’s decision to authorize such option) and the 50 per cent reduction in the fees to be paid by Least Developed Countries (LDCs) for international registrations and their modifications (to be applied from February 26, 2023). Another important innovation consists in the possibility for contracting parties to make a joint application for the registration of an AO/GI originating in a trans-border geographical area (i.e. an area covering adjacent contracting parties). In addition, upon accession to the Geneva Act, each contracting party may make protection in its territory subject to the fulfillment of one or several additional (optional) conditions requesting (by way of a formal declaration: find more the full list of declarations):
- additional information concerning the link between the quality, reputation or characteristic(s) of the good and its geographical origin;
- an individual fee to cover the cost of substantive examination of a new application for international registration (plus a possible administrative fee relating to the use by the beneficiaries of the AO/GI in that contracting party);
- that the application be signed by a person having legal standing to assert the rights conferred by the AO/GI and/or be accompanied by a declaration of intention to use.
A bright future ahead
The innovations and flexibilities introduced by the Geneva Act significantly expand the horizons of the Lisbon System to a wider economic and geographical dimension. Through an accessible and cost-effective procedure, the Lisbon System now offers a new and easier avenue (i.e. geographical indications) for producers to protect their designations internationally, as well as a greater opportunity for their goods to enter into many more markets (including regional markets such as the European Union). While preserving prior third party rights, the Geneva Act ensures legal certainty to AO/GI beneficiaries regarding the protection of their rights in the other contracting parties and grants accurate information to consumers regarding the quality and origin of the goods protected by such appellations or indications. For many countries, goods bearing an AO or a GI represent a substantial share of exports. The Geneva Act helps them to obtain recognition and protection for their AOs/GIs in the largest possible number of markets in exchange for a minimum of formalities and expense.
Any country party to the Paris Convention for the Protection of Industrial Property may accede to the Lisbon Agreement (1967 Act) and the Geneva Act of the Lisbon Agreement. Furthermore, the Geneva Act has opened the Lisbon System for accession by States party to the WIPO Convention (provided their legislation complies with the provisions of the Paris Convention concerning appellations of origin, geographical indications, and trademarks) and certain intergovernmental organizations that have been duly authorized to that effect and can provide regional titles of protection for geographical indications (such as the European Union which acceded in November 2019).
To become party to the Lisbon Agreement (1967 Act) and/or the Geneva Act (2015), an instrument of ratification or accession to the Agreement and/or the Act has to be deposited with the Director General of the World Intellectual Property Organization (WIPO). Adhesion to the Lisbon Agreement (1967 Act) takes effect three months after the date on which the Director General of WIPO has notified the deposit of the instrument of ratification or accession to the other member States, or at any later date indicated in that instrument. Adhesion to the Geneva Act takes effect, three months after the date on which the contracting party has deposited its instrument of ratification or accession or at any later date indicated in that instrument. When becoming party to the Lisbon Agreement (1967 Act) or the Geneva Act of the Lisbon Agreement (2015 Act), a country or intergovernmental organization automatically becomes a member of the Assembly of the Lisbon Union.
Worldwide Symposium on Geographical Indications
Venue: Sheraton Grand Tbilisi Metechi Palace,Tbilisi, Georgia
June 14 to 16, 2023