Source: EURLEX
Language: en
Format: md

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| ROADMAP | |
| Roadmaps aim to inform citizens and stakeholders about the Commission's work to allow them to provide feedback and to participate effectively in future consultation activities. Citizens and stakeholders are in particular invited to provide views on the Commission's understanding of the problem and possible solutions and to share any relevant information that they may have. | |
| Title of the initiative | EU accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications |
| Lead DG – responsible unit | AGRI - A.2 |
| Likely Type of initiative | Legal act(s) needed for EU membership and its implementation |
| Indicative Planning | 2nd quarter 2018 |
| Additional Information | http://ec.europa.eu/agriculture/quality\_en |
| This Roadmap is provided for information purposes only. It does not prejudge the final decision of the Commission on whether this initiative will be pursued or on its final content. All elements of the initiative described by the Roadmap, including its timing, are subject to change. | |

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| A. Context, problem definition and subsidiarity check |
| Context |
| The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, administered by the World Intellectual Property Organisation (WIPO), a specialised agency of the UN, offers a means of obtaining protection for appellations of origins (AO), a subset of geographical indications (GIs), for agricultural as well as non-agricultural products in its contracting parties (the members of the WIPO Lisbon Union) through a single registration (see www.wipo.int/lisbon/en/index.html). The Agreement has 28 Contracting Parties including 7 EU Member States (Bulgaria, Czech Republic, France, Hungary, Italy, Portugal and Slovakia), the other Contracting Parties being Algeria, Bosnia and Herzegovina, Burkina Faso, Congo-Brazzaville, Costa Rica, Cuba, Democratic People's Republic of Korea, Gabon, Georgia, Haiti, Iran, Israel, Mexico, Montenegro, Nicaragua, Peru, Moldova, Serbia, the Former Yugoslav Republic of Macedonia, Togo and Tunisia. The EU is not a Contracting Party as the current Lisbon Agreement only allows for membership of states. There are currently around 1000 AOs registered under the Lisbon Agreement, the large majority of which (nearly 90%) have been registered for EU Member States. Most (nearly 90 %) of all AOs registered are for beverage and food products. The revised and modernized Agreement of 2015 (the "Geneva Act of the Lisbon Agreement") expands the scope beyond AOs to all GIs (while both AOs and GIs require a qualitative link between the product to which they refer and its place of origin, for AOs the quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin, whereas for GIs wider criteria attributable to geographical origin – a quality, other characteristic or reputation - are sufficient). The Geneva Act is compatible with the WTO Agreement on Trade-Related Intellectual Property Rights (TRIPS) and with relevant EU legislation on GI protection for agricultural products. The effect of registration includes indefinite protection in the Contracting Parties on the condition of the one-time payment of a registration fee, except in the countries that refuse within one year or invalidate the registration. Importantly, the Geneva Act allows international organizations (defined to cover in particular the EU) to become Contracting Parties. Significantly, the Geneva Act safeguards prior trade mark rights in accordance with the relevant WTO panel ruling which confirmed the possibility of coexistence between trade marks and Geographical Indications.  Regarding agricultural products, the EU has established uniform and exhaustive GI protection systems for wines (1970), spirits (1989), aromatized wines (1991) and other agricultural products and foodstuffs (1992). Through these systems, protected names for the products covered enjoy intellectual property protection throughout the EU, based on a single application process. For non-agricultural products the protection of GIs is not harmonized at EU level and therefore governed by different national laws. |
| Problem the initiative aims to tackle |
| At present the EU is not a member of the Lisbon Union, although membership would confer substantive benefits. For over twenty years the EU has been following a successful policy of protecting GIs, mainly for agricultural products, both on the internal market and in third countries. This policy provides clear benefits to EU consumers and EU operators, as there is empirical evidence that GI-designated products have higher value-added, and are disproportionately represented in EU agri-food exports. Consumers benefit from the assurance given by a GI that they are buying a genuine product with specific qualities and value this assurance. An external study done by AND International on the "Value of production of agricultural products and foodstuffs, wines, aromatised wines and spirits protected by a geographical indication (GI)" collected economic data on each of 2768 GIs registered in the EU 27 from 2005 to 2010. It found that on average, the price of a GI product is more than twice the price of a comparable non-GI product.  EU legislation on GI protection for agricultural products is exhaustive in nature and therefore precludes national protection, as clarified by the European Court of Justice. EU Member States are therefore not supposed to have agricultural product GI protection systems of their own nor themselves to protect agricultural GIs of third country members of the Lisbon system under such GI systems. However, the EU itself, not being a Contracting Party, cannot submit agricultural GIs registered at EU level for protection under the Lisbon system, nor protect third country members' GIs on the basis of that system. In order for the EU to properly exercise its exclusive competence for agricultural GIs in the Lisbon system, the EU should become a member.  In view of the EU's exclusive competence for the Geneva Act as part of its common commercial policy, which has been confirmed by the ruling of the European Court of Justice in case C-389/15 - Commission v Council. -, EU Member States are not allowed to join the Lisbon system on their own initiative but only subject to authorisation by the EU and jointly with it. To be noted that five ratifications are needed for the Geneva Act to come into force. In the absence of EU ratification, the Geneva Act has not yet been ratified by any Contracting Party to the Lisbon Agreement or any other WIPO Member, although a number of WIPO Members, including Russia, and China and India among other Asian countries and OAPI, the African IPO, which has a GI system applicable in 17 francophone African States, have expressed their interest in joining the Lisbon system. |
| Basis for EU intervention (legal basis and subsidiarity check) |
| According to Article 5(3) of the Treaty of the European Union (TEU), the subsidiarity principle does not apply to areas of exclusive EU competence. This initiative falls under the exclusive competence of the EU according to Article 207(1) of the Treaty on the Functioning of the European Union (TFEU), as it is part of the common commercial policy, which relates inter alia to "the commercial aspects of intellectual property".  As the European Court of Justice recalled in its ruling of 25 October 2017, "it is settled case-law that international commitments concerning intellectual property entered into by the European Union fall within the common commercial policy if they display a specific link with international trade in that they are essentially intended to promote, facilitate or govern such trade and have direct and immediate effects on it."  As the European Court of Justice found, "in that regard, the system of reciprocal protection of AOs and GIs which the draft revised agreement" (i.e. the Geneva Act) "envisages is based, in essence, on three series of provisions."  "First of all, each contracting party is obliged to establish a body of rules of substantive law preventing AOs and GIs already protected on the territory of one of the other contracting parties both from being the subject of uses that are likely to damage the interests of their holders or to be detrimental to the reputation of the products that benefit from that protection (Article 11), and from becoming generic (Article 12)."  "Next, each contracting party is obliged to establish, in its legal order, rules of procedural law enabling any interested natural or legal person to secure, from the competent administrative and judicial authorities, observance of the protection which the draft revised agreement affords to those AOs and GIs, and to bring legal proceedings, or to have legal proceedings brought, against persons alleged to have infringed them (Article 14)."  Finally, the Geneva Act "enables the holders of those AOs and GIs to invoke the protection afforded by the various provisions referred to in the preceding two paragraphs, as a result of a mechanism providing for a single registration that is valid throughout the Special Union established by the Lisbon Agreement (Articles 5 to 8)."  The Court found that, in view of that single registration mechanism, the Geneva Act "will have the direct and immediate effect of altering the conditions under which trade between the European Union and the other contracting parties is organised, by dispensing manufacturers participating in that trade from the obligation that they currently face, in order to address the legal and economic risks associated with such trade, of having to lodge an application for registration of the AOs and GIs that they use with the competent authorities of each of the contracting parties."  Furthermore, in the view of the Court, the provisions of the Geneva Act described above "will have direct and immediate effects on trade between the European Union and the third States concerned, by giving all those manufacturers, and any other interested natural or legal person, the necessary tools to secure, under homogeneous substantive and procedural conditions, effective observance of the protection which the Geneva Act affords to their industrial property rights if AOs or GIs are used abroad in a harmful or unfair manner."  For these reasons, it follows, on the basis of the findings of the Court, first, that the Geneva Act "is essentially intended to facilitate and govern trade between the European Union and third States and, secondly, that it is such as to have direct and immediate effects on such trade", so that the EU's accession to it falls within the exclusive competence which Article 3(1) TFEU confers on the European Union in the field of the common commercial policy envisaged in Article 207(1) TFEU.   Generally, the protection of Intellectual property is specifically required by the EU Charter of Fundamental Rights, whose Article 17(2) provides that "Intellectual property shall be protected." |
| B. What does the initiative aim to achieve and how |
| The EU has a long-standing policy of GI protection. While, due to the current lack of progress at the WTO in respect of the EU's initiative to establish an effective and efficient multilateral system for GI protection through a multilateral register and extension of high level protection to all products, the EU is making strides in bilateral agreements on GIs, as a principle of international commerce, where there exists a multinational system and standards, this option is inherently preferable for the EU's international trade policy to a multiplication of bilateral agreements that are inevitably divergent. The EU is seen as the global leader of GIs, and WIPO in particular looks to the EU to give leadership and contribute to global policy development within the auspices of that UN body.    The new Geneva Act is a potentially significant tool in the EU's international strategy for the protection of GIs around the world in addition to the negotiation of bilateral and regional agreements and efforts to promote the protection of GIs in the WTO, especially if the Lisbon system can be extended to new members (such as ASEAN countries, India, China, Korea, Brazil or Turkey) or international organisations such as the African IP organisation OAPI. In view of the stalemate in the WTO referred to above, EU accession to the Geneva Act of the Lisbon Agreement is currently the only viable option for protecting EU GIs in a multilateral forum outside the EU    The recent ruling of the European Court of Justice clarified the EU's exclusive competence regarding the Lisbon system. However, this does not mean that the EU and its Member States cannot, where this is in their mutual interest, cooperate in carrying out the tasks which flow from the membership in the Lisbon system pursuant to the principle of sincere cooperation, also taking into account the situation of those EU Member States which either have been long-standing members of the Lisbon system or may wish to become new members.    The EU should submit a shortlist of EU GIs drawn from the EU registers (to be agreed with EU Member States) for protection under the Lisbon system. This shortlist will be established in close consultation with the Member States, following this established practice and methodology which is used for bilateral international agreements on GIs which the EU has concluded (taking into account production value and export value, protection under other agreements as well as current or potential misuse in the third countries concerned, and balance between MS), taking into account the scope of GIs registered by third country Lisbon members. Future additions to the list could be proposed    For non-agricultural GIs, the EU will not notify any such GIs and for the time being will refuse any proposed by 3rd country Members. The Geneva Act (Article 15) allows for a temporary refusal of the effects of an international registration of a GI. The EU will need to maintain the temporary refusal unless and until the EU sets up a system to protect them through horizontal legislation at EU level.    The 2018 budget adopted by the budgetary authority includes a potential EU contribution of up to €1 mio for the functioning of the Lisbon Union in WIPO on the basis of the Geneva Act.   There would be a number of advantages in case of EU membership.    It would ensure that current and future GIs registered at EU level but not registered by the 7 EU Member States in the Lisbon Union could become eligible for protection in the Lisbon system. EU GIs could in principle gain rapid, high level, indefinite protection in all current and future parties to the Geneva Act. The established multilateral register would increase the reputation of European GIs due to the wide geographic extent of protection under the Geneva Act.  Improved international GI protection resulting from EU accession is expected to consolidate and potentially expand the positive impacts of GI protection on inclusive growth and employment in high added value production in the agricultural sector, on trade and investment flows, competitiveness of business and SMEs in particular, as well as for the functioning of the internal market and competition, and for the protection of IPR.  Farmers' and food producers' intellectual property in their GI-protected products is vulnerable to exploitation and loss, especially in global markets. EU accession to the Lisbon system would help rural stakeholders protect at global level what is valuable at local level, thus countervailing the usual globalisation trend toward uniform commodity standards and downward pressure on agricultural product prices. In the current political and economic uncertainties, this would provide a visible demonstration to the rural community that the EU is acting to defend and protect their interests across the world.  As the Geneva Act is broadly equivalent to EU legislation on GI protection for agricultural products, it is not expected that EU accession will require significant adjustments of the substance of this legislation.  From an administrative point of view, the Geneva Act provides a single set of rules for obtaining protection in all members and therefore a simpler and more efficient mechanism compared to the current EU practice of dealing with a variety of local procedures through bilateral agreements. In commercial policy terms, it will demonstrate the EU's responsible leadership role promoting multilateralism. EU accession is not expected to create additional costs or burdens on EU operators or EU Member States wanting to have GIs protected in the Lisbon system as compared to the status quo. On the contrary, it is expected to even result in a reduced level of these administrative costs and burdens.    For businesses, EU accession will entail no additional adjustment, compliance or transaction costs or administrative burdens other than potential individual examination fees which Lisbon Members may apply but which will be diminished by the savings resulting from the international procedure.    The Geneva Act allows for accession of the EU together with its Member States. However, in view of the uniform and exhaustive nature of the EU GI protection system for agricultural products, any AOs or GIs submitted for protection by the seven EU Member States in the Lisbon system (currently around 800) and eligible for protection under EU legislation should no longer be protected under national legislation, but exclusively through EU legislation. This will also be the case regarding protection of GIs originating in, and submitted for protection by, third country Lisbon members. As a consequence, EU accession will result in less administrative burden of participation in the Lisbon system for EU Member States.    Notably, once the EU has joined, there will be the option of referring to the Lisbon system register rather than negotiating in detail the bilateral protection of GIs. This would be in line with practice in other areas of Intellectual Property Rights (IPR) where the EU engages its partners to join and comply with international agreements on IPR such as the Berne Convention on Copyright and the Madrid protocol on Trade Marks, rather than creating a web of divergent undertakings that can confuse stakeholders.    Accession of the EU will likely give an incentive for more third countries to join the Lisbon system, since this would give them access to protection across the whole Lisbon Union, and they could benefit from an efficient examination procedure for individual GIs in case of equivalence of their system to that of the EU.  EU accession may in particular have positive effects for developing countries which consider joining the Geneva Act as their GIs could gain protection in the EU through the Lisbon system. The interest of the 17-member African IP office, OAPI, to join Lisbon is propitious and evidence of the attraction of the GI instrument to protect developing country farmers' rights and traditional value.    As regards potential disadvantages, these could be seen in the as yet limited membership of the Lisbon system, the concern that progress on GIs in the WTO might be put even further out of reach; scepticism of some EU Member States towards EU accession, and uncertainty in respect of financial impacts. However, the modernized system under the Geneva Act should be more attractive for potential new members; progress in WIPO might even have a positive repercussion on GI discussions in the WTO by creating appropriate synergies and bringing the revised Lisbon Agreement closer to the WTO process; EU member States with reservations about the Lisbon system will not be required to join; and Lisbon members have made progress in their efforts towards ensuring financial sustainability of the Lisbon system.    On balance, the advantages of EU accession to the Geneva Act of the Lisbon Agreement outweigh the disadvantages. In order to achieve EU accession to the Lisbon System, the Commission will have to prepare a proposal for the legal acts needed for accession of the EU to the Geneva Act of the Lisbon Agreement and its implementation. |
| C. Better regulation |
| Consultation of citizens and stakeholders |
| In order to reach out to a broad range of stakeholders, the Commission carried out a public consultation in 2014-2015 on a possible extension of GI protection of the European Union to non-agricultural products (see http://ec.europa.eu/internal\_market/indprop/geo-indications/index\_en.htm).  Stakeholder reactions to the public consultation were positive. A clear majority of respondents saw a need for action at EU level and identified tangible benefits in economic, consumer protection and cultural terms. A broad majority believed that only a system based on registered GIs can provide the necessary legal certainty and ensure effective enforcement of rights. There was broad consensus that any new system should take into account the experience gained with the existing EU GI system for agricultural products, while seeking improvements where appropriate. Many respondents underlined that a new system should be easily accessible for all producers and feature fast and efficient procedures. Many addressed the relationship between GIs and trade marks, and called for clear rules on their coexistence.  As regards future consultations, the Commission will keep the Member States informed about the initiative and ensure that their interests are given due consideration in the accession preparation. To this effect, the Commission will involve the Agricultural Product Quality Policy Committee. Other stakeholders will be consulted through the Civil Dialogue Group on Quality and Promotion. |
| Evidence base and data collection |
| EU accession would be a unique opportunity for the EU's agriculture, particularly those sectors whose competitiveness on the global market depends on quality production.  The "Trade for all" Communication (COM(2015) 477 final of 14.10.2015)  - http://trade.ec.europa.eu/doclib/docs/2015/october/tradoc\_153846.pdf - highlights the particular vulnerability of IPR to poor protection and enforcement in other jurisdictions and concludes that EU trade policy must support innovative and high-quality products by protecting the entire spectrum of IPRs, including geographical indications, not only through defining rules and procedures, but also guaranteeing their enforcement. Promotion of GIs – including on non-EU markets - is to be seen in this context.  The study of October 2012 done by AND International on the "Value of production of agricultural products and foodstuffs, wines, aromatised wines and spirits protected by a geographical indication (GI)"  (http://ec.europa.eu/agriculture/external-studies/value-gi\_en)  identified a number of benefits of the EU's GI policy for consumers (quality assurance), producers (openness of the system to all producers complying with quality requirements; fair competition; price premium; efficient protection), society at large (link of valuable products to rural areas; preserving tradition; reconnection of producers and consumers) and the environment (Linking traditional products with landscapes and farming systems). Evaluating economic data on each of 2768 GIs registered in the EU 27 from 2005 to 2010, the study found in particular that on average, the price of a GI product is 2.23 times the price of a comparable non-GI product. The sales value of EU GIs (all sectors) was €54.3 billion in 2010 (5.7% of the total EU food and drink sector); the estimated EU GI exports value is € 11.5 billion (15% of EU food and drink industry exports).  In a letter to Commissioner Hogan of 20 November 2017, the Organization for an International Geographical Indications Network (oriGIn), a global Non-Governmental Organization representing some 500 associations of producers and other GI-related institutions from 40 countries, has called upon the EU to ratify the Geneva Act and indicated that several WIPO Member States are waiting for a strong signal from the EU, whose ratification might open the door to several other accessions, laying the foundations for the establishment of a truly international registry for Appellations of Origin and Geographical Indications. |

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