Lisbon Diplomatic Conference & Adoption of a New Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

Toni Polson Ashton and David Bowden
Published June 10th, 2015

WIPO’s Newest Treaty: Lisbon Members adopt Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications

On May 20, 2015, Members of the Lisbon Union adopted a revised Treaty for the protection and international registration of appellations of origin (AOs) and geographical indications (GIs) at a Diplomatic Conference in Geneva, Switzerland.

AOs and GIs are indicators of a source or quality for goods, and therefore their protection overlaps with trade-marks to some extent. However, these concepts are in many ways quite different from traditional trade-marks. For instance, AOs and GIs act as identifiers of source which may be used by any qualified producer which is recognized within a particular region by a designated authority. Trade-marks, in contrast, identify a single trader and may be transferred to parties who operate in very different geographical regions, and are therefore fundamentally private property rights.

Before the revision, the Lisbon Agreement nominally applied to AOs only and not GIs. These two terms are interrelated and often used interchangeably, but there is in fact a distinction between them:

  • An AO is a type of GI for which the link between the product and its place of origin is particularly strong. The qualities or characteristics for an AO must result exclusively or essentially from its place of origin. For instance, “Bordeaux” is an appellation which identifies a particular kind of wine produced in a region of southern France.
  • A GI, in contrast, must have a characteristic or reputation which is “essentially attributable” to its place of origin (whether or not this quality or characteristic “results” from this place of origin). This means that a GI can include ingredients that are not from a location, or can simply refer to a reputation – rather than an intrinsic characteristic of a product.

Effects on Canadian Businesses

Canada is not a member of the Lisbon Union, and said Union’s membership remains relatively small (28 countries are currently Contracting Parties). As a non-Contracting Party, Canada is not bound by the terms of the Treaty, nor will it be required to implement any changes to its national laws.

GI rights are controversial, as they sometimes conflict with prior trade-mark rights registered at the national level. Therefore, extensive GI protections are often opposed by common law countries, such as Canada, the USA and Australia, who are themselves criticized for their lack of GI protection by countries which rely on the export of GI products. Famously, a consortium of producers of prosciutto from the Parma region of Italy have been largely unsuccessful at challenging Maple Leaf Meats Inc.’s long-standing Canadian registration for the trade-mark “PARMA” in relation to a number of cured meat products (see, for instance: Consorzio del Prosciutto di Parma v Maple Leaf Meats Inc., [2001] FCJ No 89 (FCTD), aff’d [2002] FCJ No 656 (FCA)).

That being said, s. 11 of the Canadian Trade-marks Act explicitly recognizes geographical indications for wines and spirits, such as Niagara-on-the-Lake (entered on the list as #1307118). GIs accepted for publication, but not yet entered on the list, include Port (1678596), Sherry (1663378) and Prosecco (1662300). These terms are not registered like traditional marks, but are subjected to a process of advertisement and opposition similar to the procedure for regular trade-marks.

Canadian traders should also be aware of the Comprehensive Economic Trade Agreement (CETA) between Canada and the European Union. CETA mandates protection for a long list of GIs – which means that Canadian traders may soon be prohibited from describing their products or registering trade-marks which consist of certain protected terms, such as “Roquefort” or “Mortadella Bologna”.

The protection for GIs mandated under the current consolidated text of CETA is extensive. As is the case for protection mandated under the Lisbon Treaty, traders will be prohibited from using protected terms even where such terms are translated or accompanied by expressions such as “kind”, “type” or “style”. While there are certain exceptions granted for prior users of protected terms, the Agreement would be a significant change to the Canadian commercial landscape.

CETA is not yet in force. Some commentators have suggested that it will come into effect in 2016 at the earliest, but it is still currently at the negotiation level. It remains to be seen if its more extreme requirements will be implemented in their current form. Nevertheless, its focus on GIs indicates the rising concern in Europe and elsewhere about harmonized protection, and therefore these issues should be taken seriously by Canadian manufacturers.

The presentation of information in this article does not establish a lawyer-client relationship between you and Sim IP Practice or between you and any professional of Sim IP Practice. This article is for information purposes only. It is not, and should not, be taken as legal advice. You should not rely on, or take, or fail to take, any action, based upon this information only. Never disregard or delay in seeking legal advice because of something you have read in this article. Sim IP Practice professionals will be pleased to discuss resolutions to specific legal concerns you may have.

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