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.