World Intellectual

Property Organization

The importance of facilitating international protection

Lisbon, October 31, 2008

Maria Paola RizoSenior legal officer

Division of Law and International Classifications

WIPO

Why GIs?

Economic

– Tool to differentiate product in a competitive market

– Develop niche markets

– Price premia

Café Marcala

Kintamani Bali

Café de Colombia

Antigua

Ceylon tea

Darjeeling

Assam

Why GIs?

Contribute to preserve TK and folklore

Lamphun brocade Thai silk Olinalá

Why GIs?

Rural development potential

– Participation of local actors

– Reproduction of the social system

– Employment and level of income

(Sylvander, 2004)

Why GIs?

Reputation = intangible asset

Rooibos

Blue Mountain CoffeeSavon d’Alep

Argan oil

Protection

GIs: some challenges

• Fair and equitable regulation of collective use

• Inherent costs – certification and traceability systems

• Promotion

• Protection and enforcement

Threats

• Free-riding

• Registration as TM by a third party

• Becoming a generic term

Challenges of obtaining international protection

• Cost

• Complexity

different systems for protecting GIs around the world; need to adapt protection to each system

How to protect GIs at the international level?

• Bilateral treaties

• Multilateral treaties

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

– Madrid System for the International Registration of Marks

Principles and aims of the Lisbon and Madrid systems

• Special agreements under Article 19 of the Paris Convention -optional

• Aiming at facilitating the protection of trademarks and appellations of origin at the international level

• Aiming at facilitating the management of trademarks and appellations of origin after registration

Rule 9(4)(x) of the Common Regulation expressly provides for registration of collective or certification marks

1078 collective or certification marks registered

364 in classes 29 to 33

Madrid System

Madrid System

Madrid System

VINHO REGIONAL MINHO

Agreement only 7 Protocol only 28

Agreement and Protocol 49

(including EC)

Madrid Agreement and Protocol84 Contracting

Parties

Lisbon Agreement 26 Members States

• 882 appellations of origin registered

Olive oil of Nyons (FR), Parmigiano Reggiano (IT), Giant White Maize of Cuzco (PE), Muscat of Kelibia (TN)…

• Recent accessions

– Georgia (2004)– Peru (2005)– DPR Korea (2005)– Nicaragua (2006)– Iran (2006)– Montenegro (2006)

Lisbon Agreement

• GIs are IP rights with multifunctional character

• It is important to protect GIs – Use means which are available

• GIs do not function alone. Accompanied by:

– Active promotion

– Protection, nationally and internationally

– Enforcement of rights

Conclusion

Obrigado