WIPO survey (2009)

1. Dispute settlement mechanismwithin the Lisbon system 6 December 2013Massimo Vittori, Managing Director

2. WIPO survey (2009) Among other inputs, oriGIn suggested to mention in the Lisbon Agreement the possibility for interested parties to refer disputes affecting AO (and GIs), for which an application for international registration is filed under the Lisbon Agreement, to mediation and/or arbitration (for instance within the WIPO Arbitration and Mediation Centre)

3. oriGIn inputs on dispute settlement within the Lisbon system • Interested parties: • “Natural persons or legal entities, private or public, having, according to their national legislation, the right to use such appellations (art.5 of the Lisbon Agreement): right holders, beneficiaries, etc. of the AO (or of the GIs) • Other private parties which prior rights (trademark) conflict with the AO (or GI) at issue or prior use of the geographical name corresponding to the AO or (GI) might have determined its generic nature in a given Contracting party • Dispute affecting AO (and GIs) for which an application for international registration is filed under the Lisbon Agreement: i. Conflict with prior trademarks ii. Alleged generic nature of the AO (or of the GI)

4. Protection under the Lisbon system • Application for registration of an AO (or a GI) through the competent authority of a Contracting party (art. 5.1 of the Lisbon Agreement, art. 5.2 and 5.3 of the Draft revised Lisbon Agreement) • Contracting parties have 1 year to refuse the protection of an AO in its jurisdiction, indicating the grounds of any refusal (art. 5.3 of the Lisbon Agreement, art. 15.1 of the Draft revised Lisbon Agreement) • Interested parties affected by a refusal shall have the opportunity, in the country which has issued a refusal, to resort to all judicial and administrative remedies open to the nationals (art. 5.5 of the Lisbon Agreement and art. 15.5 of the Draft revised Lisbon Agreement)

5. oriGIn input • While interested Contracting parties have the right to negotiate following a refusal, and the party affected by a refusal has the right to resort to all judicial and administrative remedies in the country which issued such refusal • Mentioning, in the context of art. 15.5 of the Draft revised Lisbon Agreement, the right (or the possibility) for interested parties affected by a refusal based on conflict with a prior trademark or on the alleged generic nature of the AO (or of the GI), to refer the disputes to mediation and/or arbitration, is an option to be explored • In case of refusals based on not compliance with the definitions of AO (or GI) or other reasons, referring to conciliation and arbitration might not be feasible because the dispute would involve a private party (right holder or beneficiary) and a State

6. Advantages of such option Mediation and arbitration need anyway the consent of the parties… But “institutionalising” mediation and arbitration among private entities in the Lisbon Agreement would: • Help the beneficiaries of an AO (or GI) to get the authorisation to fight for the rights deriving from AO (or GIs) thy represent: issue of ownership • Make sure producers are involved in any negotiations which affect the rights deriving from the AO (and GIs) they represent (experience in bilateral agreements) • Promote mediation and arbitration (within a competent institution such as the WIPO Arbitration and Mediation Centre)

7. Advantages of mediation and arbitration • Flexibility • Confidentiality • Expertice • Rapid procedure • Costs (?)