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: – : 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 EUs 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 theinterested 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

11 Thank you for your attention!