CHALLENGES TO THE LISBON SYSTEM Presentation by Mihály Ficsor,

1. CHALLENGES TO THE LISBON SYSTEM Presentation by Mihály Ficsor, Vice-President, Hungarian Patent Office WIPO/INPI Forum on Geographical Indications and Appellations of Origin Lisbon, October 30 and 31, 2008

2. I. INTRODUCTION • Main challenges: • divergent approaches, variety of concepts • changes to the international environment • need for flexible interpretation • settlement of disputes • coexisting appellations • development into an autonomous system with a wider geographical coverage

3. I. INTRODUCTION • Bits of WIPO history: • 1974-1975: preparations for a new treaty in a Committee of Experts • 1970s-1980s: efforts to revise the Paris Convention • 1990: Committee of Experts – discussions about a new treaty on the protection of GIs

4. II. BUILDING ON SAND? • No uniform approach: • sui generis protection • trademark law • unfair competition (passing off) • Terminology - tower of Babel: • ”indication of source” (Madrid Agreement, Paris Convention) • ”appellation of origin” (Lisbon Agreement) • ”geographical indication” (TRIPS Agreement) • ”geographical indication (and designation of origin)” (EU Regulations)

5. III. FITTING IN WITH THE CHANGING INTERNATIONAL ENVIRONMENT • Compatibility of the Lisbon Agreement with the TRIPS Agreement: • what is a name? • quality, characteristics, reputation • exceptions under Article 24 TRIPS • optional exceptions: Articles 24.4, 24.6, 24.7 and 24.9 • mandatory exceptions: Articles 24.5 and 24.8

6. III. FITTING IN WITH THE CHANGING INTERNATIONAL ENVIRONMENT • Recent enlargements of the European Union: • specific problems related to transitional arrangements • appellations of origin of third countries protected under the Lisbon Agreement in the new EU Member States • protection of appellations of origin from new EU Member States under the Lisbon Agreement • rethinking the relationship between the EU’s acquis communautaire and the Lisbon system

7. IV. GETTING LISBON RIGHT • Proper understanding of the Lisbon system: • not limited to what you can eat or drink • neutral to the type of protection • exploring the full potential of Article 4 of the Agreement • more careful reading of Article 6 of the Agreement

8. V. SETTLEMENT OF DISPUTES UNDER THE LISBON AGREEMENT • Settlement of disputes: • Article (5) of the Agreement: remedies for the”interested party” • possibility of inter-state conflicts • need for efficient dispute settlement between contracting countries • proposals for dispute settlement in the TRIPS Council under Article 23.4 TRIPS • special arbitration, binding decisions with erga omnes effects

9. VI. WHEN TWO IS TOO MANY • Coexisting and/or homonymous appellations: • introducing a statement of grant of protection into the Lisbon system • now to define homonyms? • the case of trans-border geographical units • international applications jointly presented by two or more countries of origin • “false” and “true” homonyms • special treatment of homonyms: only for GIs

10. VII. SOME OTHER CHALLENGES • Other challenges: • widening the geographical scope of the Lisbon system • further working languages? • common ground for regional groups in WIPO • meeting the special needs of developing countries • more extended use of e-business tools • an autonomous system

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