PURPOSE: to establish the rules under which the EU will exercise its rights and fulfil its obligations under the Geneva Act of the Lisbon Agreement on appellations of origin and geographical indications.

LEGISLATIVE ACT: Regulation (EU) 2019/1753 of the European Parliament and of the Council on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

CONTENT: in order for the Union to be fully able to exercise its exclusive competence in relation to its common commercial policy, it will become a contracting party to the Geneva Act of the Lisbon Agreement on appellations of origin and geographical indications.

This Regulation establishes a legal framework for the action of the European Union following its accession to the Geneva Act of the Lisbon Agreement on designations of origin and geographical indications. It is linked to the Council Decision on the accession of the European Union to the Geneva Act.

The Geneva Act is a treaty administered by the World Intellectual Property Organisation (WIPO). It expands the scope of the Lisbon Agreement for the protection of appellations of origin and their international registration to cover not only appellations of origin but also geographical indications. In addition, it allows international organisations, such as the EU, to become contracting parties.

The main elements of the Regulation are as follows:

International registration of geographical indications

Following the accession of the Union to the Geneva Act and subsequently, on a regular basis, the Commission as Competent Authority shall file with the International Bureau of the World Intellectual Property Organisation ('the International Bureau') applications for the international registration of geographical indications protected and registered under Union law and pertaining to products originating in the Union.

The Commission shall:

- request the International Bureau to cancel a registration in the International Register of a geographical indication originating in a Member State;

- publish any international registration notified by the International Bureau;

- assess whether the conditions are met for a geographical indication originating in a third country that has been the subject of an international registration under the Geneva Act to be granted protection throughout the EU. The Commission may, on its own initiative or following a reasoned request from a Member State, a third country or a natural or legal person having a legitimate interest, withdraw the effects of the protection in the Union of a geographical indication in certain circumstances.

Relationship with trade marks

The protection of a geographical indication shall not prejudice the validity of a prior trade mark at Union, regional or national level applied for or registered in good faith, or acquired through use in good faith in the territory of a Member State, regional union of Member States or the Union.

The Regulations define the rules governing conflicts that may arise between a geographical indication that has been the subject of an international registration and a trademark.

Transitional provisions

The Regulation contains transitional provisions for Member States that were already parties to the Lisbon Agreement before the EU's accession to the Geneva Act. Seven EU Member States are contracting parties to the Lisbon Agreement: Bulgaria (since 1975), the Czech Republic (since 1993), Slovakia (since 1993), France (since 1966), Hungary (since 1967), Italy (since 1968) and Portugal (since 1966).

Member States that were already parties to the Lisbon Agreement before the EU's accession to the Geneva Act are allowed to remain parties to the Lisbon Agreement, in particular to ensure the continuity of their rights under the Agreement and the fulfilment of their obligations under it. However, they shall act only in the interests of the Union and with full respect for its exclusive competence.

Fees

Member States shall have the option of requiring that natural or legal persons or beneficiaries pay all or part of the fees payable under the Geneva Act.

Monitoring obligation for the Commission

By 14 November 2021 at the latest, the Commission shall evaluate the Union's participation in the Geneva Act and present a report on the main conclusions of this evaluation to the European Parliament and the Council.

In order to conduct such an evaluation, the Commission shall, inter alia, take into account:

- the number of geographical indications protected and registered under Union law for which applications for international registration have been submitted, cases where protection has been rejected by third Contracting Parties,

- the evolution of the number of third countries participating in the Geneva Act and the action taken by the Commission to increase that number, as well as the impact of the current state of Union law as regards geographical indications on the attractiveness of the Geneva Act to third countries,

- the number and type of geographical indications that originate from third Contracting Parties and that have been rejected by the Union.

ENTRY INTO FORCE: 13.11.2019.

The European Parliament adopted by 610 votes to 31, with 8 abstentions, a legislative resolution on the proposal for a regulation of the European Parliament and of the Council on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The European Parliament’s position adopted at first reading under the ordinary legislative procedure amended the Commission proposal as follows:

Objective

The Regulation shall establish rules and procedures concerning actions of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications. The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration is a 1958 treaty, which offers means of obtaining protection for appellations of origins in its Contracting Parties. The Agreement has currently twenty-eight Contracting Parties including seven Member States.

International registration of geographical indications

Following the accession of the Union to the Geneva Act and subsequently, on a regular basis , the Commission as Competent Authority shall file with the International Bureau of the World Intellectual Property Organization ('the International Bureau') applications for the international registration of geographical indications protected and registered under Union law and pertaining to products originating in the Union.

To this end, Member States may request the Commission to register geographical indications originating in their territory, protected and registered under Union law, in the International Register. Such request may be based on a request by a natural person or legal entity as referred to in the Geneva Act or by a beneficiary of the Geneva Act, or their own initiative.

The addition of geographical indications to the International Register should serve the purposes of providing quality products, fair competition and consumer protection.

The Commission shall use existing regular mechanisms to consult Member States, trade associations and Union producers in order to establish an ongoing dialogue with relevant stakeholders.

Cancellation of a geographical indication originating in a Member State of the Union registered in the International Register

The Commission shall adopt an implementing act requesting the cancellation of a registration in the International Register of a geographical indication originating in a Member State of the Union if that geographical indication is no longer protected in the Union or at the request of the Member State in which the geographical indication originates.

Publication of third country geographical indications registered in the International Register

The Commission shall publish any international registration notified by the International Bureau of the Geneva Act concerning the geographical indications registered in the International Register and in respect of which the Contracting Party of Origin is not a Member State, provided that the publication relates to a product in respect of which protection at Union level of geographical indications is provided.

Transitional provisions

Member States which already are contracting parties to the Lisbon Agreement may remain as such, in particular to ensure the continuity of rights granted and the fulfilment of obligations under that Agreement. However, they should act solely in the interest of the Union and in full respect of the exclusive competence of the Union.

In order to respect the uniform protection system for geographical indications established in the Union as regards agricultural products and in order to further enhance the harmonisation within the Single Market, these Member States should not register under the Lisbon Agreement any new appellations of origin for products falling within the scope of Regulation (EC) No 110/2008, Regulation (EU) No 1151/2012, Regulation (EU) No 1308/2013 or Regulation (EU) No 251/2014.

Those Member States have registered appellations of origin under the Lisbon Agreement. Transitional arrangements should be provided for continued protection subject to the requirements of that Agreement, the Geneva Act and the Union acquis.

The amended text also provides for transitional protection for appellations of origin originating in a third country registered under the Lisbon Agreement.

Fees

Member States may require that natural person or legal entity or a beneficiary to pay some or all of the fees under the Geneva Act.

Monitoring and review

By two years from the date of the entry into force of this Regulation, the Commission shall assess the participation of the Union in the Geneva Act and submit a report on the main findings to the European Parliament and to the Council. The assessment shall be based, inter alia, on the following aspects:

- the number of geographical indications protected and registered under Union law for which applications for international registration have been submitted, and cases where the protection has been rejected by third contracting parties;

- the evolution of the number of third countries participating in the Geneva Act and the action taken by the Commission to increase the number as well as the impact of the current state of the Union acquis as regards geographical indications on the attractiveness of the Geneva Act to third countries; and

- the number and type of geographical indications originating from third countries which have been rejected by the Union.

In a statement annexed to the legislative resolution, the Commission took note of the European Parliament's resolution of 6 October 2015 on the possible extension of EU geographical indication protection to non-agricultural products.

On the basis of a study it launched in November 2018 and the report on the Union's participation in the Geneva Act, the Commission will consider possible further steps.

The Committee on Legal Affairs adopted the report by Virginie ROZIÈRE (S&D, FR) on the proposal for a regulation of the European Parliament and of the Council on the action of the Union following its accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

on the proposal for a regulation of the European Parliament and of the Council on action by the European Union following its accession to the Geneva Act of the Lisbon Agreement on designations of origin and geographical indications.

As a reminder, the proposal aims to establish a legal framework ensuring the effective participation of the European Union in the Lisbon Union of the World Intellectual Property Organisation (WIPO) on the day it becomes a Contracting Party to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications.

The Lisbon Agreement for the Protection of Appellations of Origin and their International Registration is a 1958 treaty, which offers means of obtaining protection for appellations of origins in its Contracting Parties. The Agreement has currently twenty-eight Contracting Parties including seven Member States.

The committee recommended that the European Parliament's position adopted at first reading under the ordinary legislative procedure should amend the Commission's proposal as follows.

International registration of geographical indications following accession

Members suggested that the Commission submit to the WIPO International Bureau an application for entry in the International Register of a list of geographical indications originating in the Union and protected on its territory, in close cooperation with the Member States, trade associations and producers concerned.

The list of geographical indications adopted by the Commission by means of an implementing act should contain all of the European geographical indications, which have already been registered in the International Register by those Member States who were contracting parties of the Special Union before the accession of the Union to the Geneva Act.

By six months from the entry into force of this Regulation, an authority of a Member State, or an interested group of producers or a single producer using a geographical indication protected and registered in the Union, shall notify the Commission of the names of the geographical indications they wish to have included in the list of geographical indications.

The Commission should be able to object to the addition of a specific geographical indication in the list of geographical indications originating and protected in the territory of the Union and should justify its decision in that regard taking in account the export value of the geographical indication or its export potential or both and the special economic and regional importance of the geographical indication.

In addition, Parliament should be able to propose geographical indications for registration within the Lisbon Union.

The Commission should use a regular mechanism to consult Member States, trade associations and Union producers in order to establish an ongoing dialogue with relevant stakeholders.

Non-agricultural geographical indications

Members suggested setting up a procedure for for withdrawal of refusal of protection, especially in the case of further developments in Union law allowing non-agricultural geographical indications to be protected.

The Commission should present, as soon as possible, a legislative proposal to extend the protection granted to geographical indications under Union law to non-agricultural products. Non-agricultural geographical indications protected in the Member States should not be affected by the Regulation until such a system is put in place.

The report also emphasises that consideration should be given to ways in which the seven Member States of the European Union that are members of the Lisbon Union can continue to fully protect their non-agricultural geographical indications, in the context of a partial application of the Geneva Act.

Monitoring and review

The Commission shall monitor and assess the application of the Regulation over time. In carrying out this assessment, the Commission shall, inter alia , take into account (i) the number of geographical indications protected under Union law in relation to which notification has been received, with a justification for the choice of those notified indications, and the geographical indications protected under Union law which have been rejected by third parties; (ii) the evolution of the number of third countries participating in the Geneva Act and the action taken by the Commission to increase the number; and (iii) the number of non-agricultural geographical indications originating from third countries which have been rejected by the Commission.

PURPOSE: to establish a legal framework guaranteeing the effective participation of the Union in the World Intellectual Property Organisation (WIPO) Lisbon Union once the Union becomes a Contracting Party to the Geneva Act on appellations of origin and geographical indications.

PROPOSED ACT: Regulation of the European Parliament and of the Council.

ROLE OF THE EUROPEAN PARLIAMENT: the European Parliament decides in accordance with the ordinary legislative procedure and on an equal footing with the Council.

BACKGROUND: this proposal is related to the Commission proposal for a Council Decision on the Union's accession to the Geneva Act of the Lisbon Agreement on appellations of origin and geographical indications.

The Geneva Act protects appellations of origin, including ‘designations of origin’ as defined by Regulation (EU) No 1151/2012 of the European Parliament and of the Council and Regulation (EU) No 1308/2013 of the European Parliament and of the Council, and geographical indications, which are henceforth both referred to as ‘geographical indications’.

In order for the Union to be fully able to exercise its exclusive competence in relation to its common commercial policy , it will become a contracting party to the Geneva Act of the Lisbon Agreement on appellations of origin and geographical indications (‘the Geneva Act’). The contracting parties to the Geneva Act are members of a Special Union created by the Lisbon Agreement for the protection of appellations of origin and their international registration (‘Special Union’). The Union is to be represented by the Commission in the Special Union.

It is necessary to establish a legal framework for the action of the European Union following its accession to the Geneva Act of the Lisbon Agreement on designations of origin and geographical indications. The proposal is consistent with the EU's general policy to promote and enhance the protection of geographical indications through bilateral, regional and multilateral agreements.

IMPACT ASSESSMENT: the Commission has not carried out an impact assessment. It stresses, however, 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 seven 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; it 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; 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; 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.

CONTENT: the proposal establishes rules allowing the Union to fully exercise all its rights and obligations following its accession to the Geneva Act .

The main elements of the proposal are as follows:

International registration of geographical indications following accession : following the accession of the Union to the Geneva Act, the Commission should as a first step file with the International Bureau of the World Intellectual Property Organization ('the International Bureau') an application for registration of a list of geographical indications originating and protected in the territory of the Union in their register (‘the International Register’).

This list should be established in close consultation with the Member States, following this established practice and methodology which is used for some of the bilateral international agreements on Geographical indications 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 Member States), taking into account the scope of Geographical indications registered by third country Lisbon members.

Subsequent international registration of geographical indications of the Union : following the accession of the Union to the Geneva Act, applications for international registration of additional protected geographical indications registered in the Union would be possible on the initiative of the Commission or at the request of a Member State or producer group concerned.

Examination of geographical indications of third countries entered in the International Register : the proposal establishes appropriate procedures should be established in order for the Commission to assess geographical indications originating in the contracting parties to the Geneva Act which are not Member States ('third Contracting Parties') and registered in the International Register, in order to provide for a procedure to decide on protection in the Union and to cancel such protection, where relevant.

Enforcement by the Union of the protection of geographical indications originating in third Contracting Parties and registered in the International Register should be done in accordance with Chapter III of the Geneva Act, which requires each Contracting Party to make available effective legal remedies for the protection of registered geographical indications and provide that legal proceedings for ensuring their protection may be brought by a public authority or by any interested party, whether a natural person or a legal entity and whether public or private, depending on its legal system and practice.

Transitional protection : seven Member States are members of the Special Union and as such have accepted the protection of the geographical indications of third Contracting parties. In order to provide for them the means to fulfil their international obligations assumed before the accession of the Union to the Geneva Act, a transitional arrangement should be provided which should produce effects at national level only, and have no effect on intra-Union or international trade.

Fees : the fees to be paid under the Geneva Act, and specified in the Common Regulations, for the filing an application with the International Bureau for the international registration of a geographical indication and for the supply of extracts, attestations or other information concerning the contents of that registration should be borne by the Member State from which the geographical indication originates.