The EU joins the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Thursday, 19 of December of 2019

Last October, the European Union acceded to the Geneva Act of the Lisbon Agreement for the international protection of Appellations of Origin and Geographical Indications.

The Lisbon Agreement of 1958 is one of the Treaties administered by the World Intellectual Property Organization (WIPO) which, like the Madrid System for trademarks or the Hague System for designs, offers an international route for the protection of Appellations of Origin (AO) through a single registration. In May 2015, the Agreement was amended by the Geneva Act.

These two rules of International Law - the Lisbon Agreement and the Geneva Act - constitute what is commonly referred to as the "Lisbon System” or “Lisbon Union", of which so far only 28 states were members, 7 of them being members of the European Union (Bulgaria, Czech Republic, France, Italy, Hungary, Portugal and Slovakia).

One of the most relevant new provision introduced by the Geneva Act in the System devised in 1958 is the extension of the scope of protection to Geographical Indications, since initially the Agreement applied only to AOs. On the other hand, the Act foresees the possibility of accession by certain international intergovernmental organizations, such as the European Union.
Other implications of the Geneva Act are, firstly, the flexibility it introduces into the System, allowing contracting parties to freely determine the system of protection of products registered under the Lisbon System. Secondly, it provides for the possibility of submitting a joint application to those contracting parties adjacent to a cross-border geographical area. And finally, and without prejudice to the traditional ex officio refusal, under the Act right holders whose interests would be affected by an international registration can request their national Competent Authority to notify a refusal of protection

However, although the Act was adopted in 2015, its provisions had not entered into force. Five contracting parties had to ratify or accede for this rule to be effective.
Thus, after several years of legislative process, the European Union becomes the fifth member to deposit its instrument of accession, which will allow the entry into force of the Geneva Act in February 2020.

On 25 October 2019, Council Decision 2019/1754 of 7 October 2019, whereby the EU acceded to the Geneva Act of the Lisbon Agreement, and Regulation 2019/1753 of the European Parliament and of the Council of 23 October 2019 on action by the Union following its accession to the Geneva Act of the Lisbon Agreement Relating to Appellations of Origin and Geographical Indications were published.

This being the case, the EU now has exclusive competence in the areas covered by the Geneva Act. As the European Court of Justice has already pointed out, in its judgment of 25 October 2017 in Case C-389/15, the Geneva Act is essentially intended to facilitate and regulate trade relations between the Union and third countries and may have direct and immediate effects on such trade, so those negotiations falls within the exclusive competence conferred on the Union by Article 3(1) of the TFEU in the field of the common commercial policy.
This implies that the EU Commission is the solely responsible for the applications for the international registration of geographical indications pertaining to products originating in any EU Member State.

In such a context, Member States which were already contracting parties to the Lisbon Agreement may remain so, but they must act in the interest of the European Union and may not register under the Lisbon Agreement any new AO. In addition, transitional provisions have been included in the Regulation in order to allow for the continued protection of AOs originating in these Member States, as well as ODs originating in a third country already registered under the Lisbon Agreement.

As for the other Member States which were not party to the Lisbon Agreement, they are prevented from joining or ratifying it. However, they may accede to or ratify the Geneva Act together with the Union, in the interest of the Union and in full respect of its exclusive competence. Moreover, the EU will vote in the Assembly of the Special Union and Member States which have ratified or acceded to the Geneva Act will not exercise their right to vote.

Finally, apart from the obvious positive implications for consumers and producers in the European Union due to this accession, the main consequence will undoubtedly be the territorial extension of the Lisbon System, which in turn will lead to the subsequent accession of other previously non-participating states. Thus, it is expected that a true International System of protection of AO and GI will be consolidated, comparable to other more established systems of international protection of industrial property rights.