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TAO/l/2 WIPO WORLD GENEVA ORIGINAL: French DATE: June 28, 1974 INTELLECTUAL PROPERTY ORGANIZATION COMMITTEE OF EXPERTS ON THE INTERNATIONAL PROTECTION OF APPELLATIONS OF ORIGIN AND OTHER INDICATIONS OF SOURCE Geneva, November 4 to 8, 1974 PRESENT SITUATION AND POSSIBLE NEW SOLUTIONS Report prepared by the International Bureau SUMMARY This document contains a study of the problems relating to the international protection of appellations of origin and other indications of source. It includes, in particular, an analysis of the main international conventions, both multilateral and bilateral, eXisting in this field, and an outline of the measures to be considered with a view to improving the present situation at the multilateral level. TAO/I/2 page 2 Introduction 1. At its sixth session, which was held in Geneva on October 1 and 2, 1971, the Council of the Lisbon Union, in response to a proposal by the Director General of WIPO, decided to entrust the International Bureau with the task of conducting a study on the possibility of revising the Lisbon Agreement for the Protection of Appellations of Origin and their I.nternational Registration (hereinafter referred to as "the Lisbon Agreement"); the study was to be based in particular on a Survey which would be carried out among the countries of the Paris Union for the Protection of Industrial Property (hereinafter referred to as "the Paris Union") (see document AO/VI/6, paragraph 18). 2. In accordance with the above decision, the Director General sent a circular to each Paris Union country which was not party to the Lisbon Agreement, in order to obtain its opinion on a possible revision of that Agreement. 3. The replies received were analyzed in documents P/EC/VIII/6 and P/EC/VIII/7, and were themselves annexed to those documents, which were submitted to the Executive Committee of the Paris Union at its eighth ordinary session, held in Geneva from September 25 to 30, 1972. At that session the Executive Committee of the Paris union invited the International Bureau to study, with the aid of a working group, the question of revising the Lisbon Agreement and/or the Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods (hereinafter referred to as "the Madrid Agreement (Indications of Source)"), or the drafting of a new treaty (see documents P/EC/VIII/6, paragraph 25, and P/EC/VIII/16, paragraph 25). For its part, the Council of the Lisbon Union, at its seventh session, held in Geneva on September 28 and 29, 1972, entrusted the International Bureau with the task of undertaking a study concerned first and foremost with a revision of the Lisbon Agreement, without however disregarding other possible solutions if they might be expected to give better results, in particular the merging of the Lisbon Agreement and the Madrid Agreement (Indications of Source), or the drafting of a new treaty (see document AO/VII/6, paragraph 18). 4. The administrative bodies of WIPO and of the Unions administered by WIPO and BIRPI (United International Bureaux for the Protection of Intellectual Property), at their fourth series of meetings, held in Geneva from November 19 to 27, 1973, noted that the study on the international protection of appellations of origin would be actively pursued in 1974 (see document AB/IV/35, paragraph Ill). 5. The present document contains the study mentioned in the foregoing paragraphs. It comprises the following subdivisions: I. II. General (paragraphs 6 to 12). International protection of appellations of origin and other indications of source at the multilateral level (paragraphs 13 to 58) Paris Convention (paragraphs 14 to 22) Madrid Agreement (Indications of Source) (paragraphs 23 to 30) Stresa Convention (paragraphs 31 to 36) Lisbon Agreement (paragraphs 37 to 55) Other multilateral conventions (paragraphs 56 to 58). III. International protection of appellations of origin and other indications of source at the bilateral level (paragraphs 59 to 80) Bilateral treaties concluded prior to the Lisbon Agreement (paragraphs 60 and 61) Bilateral treaties concluded since 1960 (paragraphs 62 to 80). IV. Measures to be considered for improving the international protection of appellations of origin and other indications of source at the multilateral level (paragraphs 81 to 89). TAO/I/2 page 3 I. General 6. The problem of the protection of appellations of origin and other indications of source is a delicate one to solve for two main reasons. First, the concepts of indication of source and appellation of origin are not uniformly recognized in all countries. Secondly, the means whereby appellations of origin and other indications of source are protected at the national level tend to differ. 7. For the sake of clarity and in order to ensure that uniformity of terminology which is essential to our study, it is necessary, without going into an exhaustive analysis, to define briefly the concepts of indication of source and appellation of origin. The following definitions have been chosen merely t? facilitate discussion within the Committee of Experts: they are in no way intended to prejudge the results of the Committee's work. They are taken from the Model Law for Developing Countries on Appellations of Origin and Indications of Source (hereinafter referred to as lithe Model Law tl ) , shortly to be published by WIPO. 8. Indication of source means any expression or sign used to indicate that a product (or a service) originates in a country, a region or a specific place. Appellation of origin may be defined as the geographical name of a country, region or specific place which serves to designate a product originating therein the characteristic qualities of which are due exclusively or essentially to the geographical environment, including natural factors, human factors, or both natural and human factors. 9. Indications of source and appellations of origin have a common characteristic in that they both serve to identify the source or origin of the products on which they are used--the words "source" and "origin" should be regarded as synonyms, it being merely customary to connect "source" with Ilindication" and Il o rigin ll with llappellation.1I Appellations of origin, however, have an additional function which indications of source lack and which constitutes the main distinction between the two concepts: whereas an indication of source shows only where a product comes from, an appellation of origin indicates in addition the characteristic qualities of a product which are determined by the area from which it is derived and to which the appellation refers ("Champagne," for instance). Thus all appellations of origin are indications of source, but not all indications of source are appellations of origin. Another difference, of lesser importance, between the two concepts lies in the fact that, while any expression or sign evoking the source of a product-may constitute an indication of source (a national emblem, for instance), an appellation of origin is always a geographical name (generally the name of the country, region or place from which the product comes, but in some cases it can refer to a specific geographical area without actually indicating its name). 10. In certain countries in which the appellation of origin concept is not widely known, the term "indication of source" is used to designate not only denominations having merely the characteristics of indications of source as defined above, but also those which, in addition, give the products on which they are used a certain reputation or recognition in the eyes of the public; they are not exactly appellations of origin inasmuch as there is no requirement of an objective link between the characteristic qualities of the product and the geographical environment (for instance, "Berl.iner we i s se" for one of the beers of Berlin). When the latter type of designation is referred to in this document, the expression "qualified indications of source" will be used. To avoid all ambiguity, the expression "simple indications of source" will be used to denote indications which correspond to the definition of the indication of source given in paragraph 8 but do not have the characteristics either of appellations of origin or of qualified indications of source ("Moutarde de Dijon," for instance). 11. The means of protection of appellations of origin and other indications of source often differ from country to country. In general, two approaches may be observed. The first has been developed in countries Which have the concept of appellation of origin (France, for instance); according to this approach appellations of origin are the subject of exclusive rights of a collective nature; for each appellation of origin, the right derives from an official act which determines the circle of persons authorized to use the appellation and the conditions of that USe; the term "act" should be understood in its widest Sense; the official act may thus be a legislative instrument (such as an Act of the legislature, a decree or an order) or a registration or again a judicial decision. The second approach, which corresponds more to the indication of source concept and is adopted, for instance, in the Federal Republic of Germany, is based on the idea that the prime TAO/I/2 page 4 consideration is to protect the public against deception; such protection is ensured in a general way, and not separately for each indication--at least in so far as an indication has not been the subject of a judicial decision--by means of unfair competition law, for instance, or certain provisions of trademark law. There is nothing to prevent the system of special official acts and that of general, protection against deception from coexisting in one and the same country. 12. In the present state of national legislation, it does not seem realistic to expect the immediate future to.bring about the -acceptance of uniform concepts for indications of source and appellations of origin and a harmonization of the means of protection. It seems, moreover, that such a unification of national legal concepts is not necessary for a satisfactory solution to be found to the problem of the international protection of appellations of origin and other indications of source. The following chapters of this document will show that the Lisbon Agreement is based on concepts which are perhaps too restrictive, and that one of the advantages achieved by recent bilateral treaties consists in not limiting the sUbject of protection but leaving the Contracting States to determine by negotiation what denominations they will protect; in addition, the provision in the majority of these bilateral treaties for the application of the law of the country of origin, that is, of the country to which the denomination in question refers (or in which the region or the place referred to by the denomination is located), eliminates the drawbacks of differing types and degrees of protection in that i t allows uniform protection to be afforded to each denomination. II. International protection of appellations of origin and other indications of source at the multilateral level 13. The historical development of multilateral conventions dealing with the protection of appellations of origin and other indications of source shows how difficult the adoption of satisfactory solutions in this field has proved for all the countries concerned. The purpose of this chapter is to recall the various milestones, from the end of the last century 'to the present day, in the history of multilateral international protection of appellations of origin and other indications of source, examining the relevant provisions of the Paris Convention for the Protection of Industrial Property (hereinafter referred to as II the Paris Convention"), the Madrid Agreement (Indications of Source), the Stresa International Convention for the Use of Appellations of Origin and Denominations of Cheeses (hereinafter referred to as "the Stresa Convention") and the Lisbon Agreement, and mentioning two other multilateral conventions. Paris Convention 14. Several provisions of the Paris Convention deal specifically with indications of source or appellations of origin: Article 1(2), which contains a list of objects of industrial property; Article 10, which deals with the protection of indications of source; Article 9, to which Article 10 refers in respect of the sanctions applicable; and Article 10ter, which reinforces the provisions of Articles 9 and 10. The most recent textS of Articles 9, 10 and lO~ of the Paris Convention are reproduced in document TAO/I/3. 15. The original 1883 text of the Paris Convention did not mention either indications of source or appellations of origin in the list of objects of industrial property. Indications of source were introduced by the Washington Revision Conference (1911), and appellations of origin by that of The Hague (1925). Their presence in Article 1(2) does not in itself entail the obligation for any Paris union country to ensure their protection. Admittedly this obligation does arise out of Article 10, but only for indications of source, so that specific protection of appellations of origin is not mandatory under the Paris Convention. However, Articles 9, 10 and 10ter are applicable to appellations of origin inasmuch as they constitute indications of source. 16. Article 10(1) is the basic provision of the Paris Convention on indications of source. The original 1883 text provided that Article 9, under which all goods unlawfully bearing a trademark or a trade name might be seized on importation, applied to any goods which falsely bore as an indication of source the name of a specified locality, when such indication was joined to a trade name of a fictitious character or used with fraudulent intention. The scope of Article 10(1) was limited in the 1883 text from four standpoints: seizure TAO/I/2 page 5 was not mandatory but optional in terms of Article 9; the provision was applicable only to indications consisting of the name of a specified locality; seizure could not be effected unless the indication was joined to a trade name of a fictitious character or used with fraudulent intention; finally, Article 10(1) applied only. to an indication appearing On the product itself. 17. Only very slowly was the scope of Article 10(1) broadened. The Washington Conference (1911) made mandatory, in Article 9, the application of the prohibitions and sanctions provided for, and in so doing indirectly changed the effect of Article 10(1). In spite of a considerable number of proposals, which were not adopted because of their divergent nature, the Hague Revision Conference (1925) made only a minor change in Article 10(1): in future not only the name of a specified locality but also that of a specified country could constitute a false indication of source. On the other hand, the Lisbon Revision Conference (1958) achieved an important advance from three points of view: first, Article 10(1) applied in future to any direct or indirect use of a false indication as to the source of a product, regardless of whether the indication was the name of a specified locality or country or whether it was joined to a trade name of a fictitious character or used with fraudulent intention; secondly, for the provision to be applicable, there was no need for the false indication to appear on the product since any direct or indirect use, for instance in advertising, was henceforth sanctionable; thirdly, the effects of Article 10(1) extended in future to any use of a false indication of the identity of the producer, manufacturer or trader. However, it was not possible to introduce into the Paris Convention the principle of the repression of deceptive indications of source, that is, indications which, without being false, are liable to mislead the pUblic,· whereas it was possible in the Madrid Agreement (Indications of Source). 18. The sanctions in the case of the use of a false indication of source are those provided for in Article 9. This provision which, like Article 10(1), was originally very limited as it provided only for seizure on importation, and then only optionally, was gradually completed. Since the Brussels Revision Conference (1900), seizure on importation may be replaced, if national legislation does not provide for it, by prohibition of importation, and the authorities are not bound to effect seizure of goods in transit. Since the Washington Revision Conference (1911), the application of sanctions is mandatory; in addition, seizure must also be effected in the country in which the unlawful affixation occurred and in that into which the goods were imported; finally, where seizure on importation, prohibition of importation and seizure inside the country are not permitted by the legislation of that country, these measures must be replaced by the actions and remedies available in such cases to nationals under the law of such country. Since the Hague Conference (1925), Article 9 invites States whose national legislation permits neither seizure on importation nor prohibition of importation nor seizure inside the country to modify their legislation accordingly, but does not impose any obligation to do so. In spite of all these amendments, Article 9, which has not undergone any further amendment since 1925, still has a limited scope in that it provides for administrative sanctions only. 19. Article 9(3) and Article 10(2) determine who may request seizure on'importation or the imposition of other sanctions. Both these provisions existed in the original 1883 text and were gradually developed. From the outset Article 9(3) has provided that the measures may be requested either by the~ic prosecutor Or by an interested party; since the Washington Revision Conference (1911), any competent authority other than the pUblic prosecutor may also intervene; as for the interested party, this concept has been clarified in two stages: the interested party may be an individual or a company, as stated first by the Washington Act (1911), or a natural person or legal entity, to use the terms adopted later by the Hague Revision Conference (1925). 20. Article 10(2) was originally limited to manufacturers or traders established in the locality falsely indicated and was worded somewhat restrictively: "any manufacturer or trader '" shall be deemed an interested par cy . II The Brussels Revision Conference (1900) added producers to manufacturers and traders and gave the parties in those three categories the status of interested party even if they were established not in the locality falsely indicated but in the district in which that locality was situated. The Hague Revision Conference (1925) then made it clear, by adopting the words "shall in any case be deemed an interested party, II that, like the whole of the Paris Convention in general, Article 10(2) did no more than establish a minimum; moreover, the same TAO/I/2 page 6 Conference stated that natural persons and legal entities as well as persons established in the country falsely indicated could be interested parties; finally, the London Revision Conference (1934) made a last amendment to Article 10(2), adding to the list of possible interested parties persons established in the country where the false indication of source is used. 21. Article later, which was incorporated in the Paris Convention at the Hague Revision Conference (1925) and underwent only one drafting change at the London Revision Conference (1934), is of some importance in connection with indications of source inasmuch as it obliges countries of the Union to provide, on the one hand, appropriate legal remedies and to permit, on the other, federations and associations representing interested industrialists, producers or traders to take action, under certain conditions, with a view to the repression of false indications of source. 22. The main advantage of the protection afforded by the Paris Convention to indications of source lies in the extent of the territorial area covered by the Paris Union, which at present comprises 80 member countries. In other respects, however, the Paris Convention affords only very limited protection: deceptive indications of source are not covered by the Paris Convention, neither is the use of false indications in translation or qualified by terms such as "kind," or "type"; the question of indications of source regarded as generic names is not dealt with, so that countries of the Union are entirely free in that respect; finally, mandatory sanctions are confined to seizure and similar measures, in other words purely administrative sanctions. These limitations considerably diminish the practical effectiveness of the Paris Convention with respect to indications of source. Madrid Agreement (Indications of Source) 23. The inadequacy of the protection afforded by the original text of the Paris Convention and the failure of the Rome Revision Conference in 1886 induced a number of Paris Union member countries particularly interested in the protection of indications of source to conclude, within the framework of the Paris Union, a Special Agreement which was signed in Madrid in 1891. The comments in the following paragraphs relate only to the substantive provisions of that Agreement, the most recent text of which is reproduced in document TAO/I/3. 24. Already in the original 1891 text, Article 1(1) provided that any product bearing a false indication of source by which one of the contracting countries or a place situated therein was directly or indirectly indicated as being the place of origin would be seized on importation into any of those countries. Compared with the text of the Paris Convention then in force, the said paragraph (1) has the following advantages (see paragraph 16): first, seizure is mandatory (and not optional); secondly, the provision applies when a cOntracting country or a place situated therein is falsely indicated as being the country or place of origin (and not only when the indication consists of the name of a specified locality and is joined to a trade name of a fictitious character or used with fraudulent intention). However, Article 1(1) of the Madrid Agreement (I~dications of Source), like Article 10 of the Paris Convention, is applicable only if the false indication appears on the product itself. 25. The scope of the Madrid Agreement (Indications of Source) was broadened by the Lisbon Revision Conference (1958). The Agreement now aims at the repression not only of false but also of deceptive indications of source. 26. The other paragraphs of Article 1 and Article 2, which were amended or added in the course of the twentieth century, specify the cases and the ~anner in which seizure or similar measures may be requested and carried out. These provisions are very similar to the corresponding rules of the Paris Convention, except on the matter of entitlement to request sanctions; indeed the Madrid Agreement (Indications of Source) falls short of the Paris Convention in the latter respect: it does not provide, as the Paris Convention does, that private individuals may request seizure directly, such persons being obliged to apply through the public prosecutor or any other competent authority. 27. Article 3 authorizes the vendor to indicate his name or address on goods coming from a country other than that in which the sale takes place, but obliges him, if he does so, to have his name or address accompanied by an exact indicat~on in clear characters of the country or place of manufacture or production. Article 3 was completed at the Hague Revision Conference (1925) TAO/I/2 page 7 in the sense that it is now enough for the vendor to make any indication, in addition to his name or his address, which is sufficient to avoid any error as to the true source of the goods. It should be- noted that Article 3 does not place the vendor under an obligation to indicate the source of the goods unless they bear his name or address and come from abroad. 28. Article 3bis was inserted by the London Revision Conference (1934). This provision obliges the Contracting States to prohibit the use, in connection with the sale or display or offering for sale of any goods, of all indications in the nature of publicity capable of deceiving the pUblic as to the source of the goods. This constitutes an advance in that previously only false indications affixed on the products themselves were provided for (see paragraph 24). Article 3bis is not self-executing, however. 29. Article 4 is the most controversial provision of the Madrid Agreement (Indications of Source). It first provides that the courts of each country are to decide what appellations, on account of their generic character, do not fall within the provisions of the Agreement'. It then specifies, however, that regional appellations concerning the source of products of the vine are excluded from the reservation inherent in the provision. The reservation substantially limits the scope of the Madrid Agreement (Indications of Source), in spite of the important exception constituted by the case of regional appellations concerning the source of products of the vine, for which protection is absolute. Yet the expression "regional appellations concerning the source of products of the vine" is somewhat ambiguous and has given rise to divergent interpretations. Apart from an amendment of a purely drafting nature which was adopted at the Washington Revision Conference (1911), Article 4 has not undergone amendment since 1891, although a number of proposals have been made, including one made at the Lisbon Revision Conference (1958) to extend the exception provided for products of the vine to other products. 30. The territorial scope of the Madrid Agreement (Indications of Source) i 1 considerably smaller than that of the Paris Convention, as only 31 countries are bound by it. In addition, the Agreement has certain limitations identical with those in the Paris Convention: the repression of false or deceptive indications used in translation or qualified by terms such as "kind" or "type" is not provided for, in spite of efforts made at the Lisbon Revision Conference (1958); apart from regional appellations concerning the source of products of the vine, appellations of origin do not enjoy any specific protection; indications of source are not protected against the risk of becoming generic names, except where they are regional appellations concerning the source of products of the vine; finally, the sanctions provided for are purely administrative in character, as in the Paris Convention. Compared with the latter, the Madrid Agreement (Indications of Source) has shown only two improvements since 1958: the repression of deceptive indications of source is now provided for, and regional appellations concerning the source of products of the vine are protected against the risk of becoming generic names. It is interesting to note that the Madrid Agreement (Indications of Source), which originally represented a considerable advance in relation to the Paris Convention, gradually lost its lead with the more marked development, particularly at the Lisbon Revision Conference (1958), of Article 10 of the Paris Convention compared with the provisions of the Agreement. However, the more or less parallel levels of protection afforded by the two instruments are quite inadequate to meet practical requirements. stresa Convention 31. The Stresa Convention, which was signed in 1951, is designed to ensure the international protection of appellations of origin and denominations of cheeses. It is the sequel to a convention signed in Rome in 1930 which did not enter into force for want of ratification. The Stresa Convention makes a distinction between appellations of origin and denominations. As the latter are not indications of source but rather "indications of quality," only the provisions applicable to appellations of origin will be commented on in the following paragraphs. The text of the Stresa Convention and the Protocols which are an integral part of it are reproduced in document TAO/I/3. 1 Algeria, Brazil, Cuba, Czechoslovakia, Dominican Republic, Egypt, France, German Democratic Republic, Germany (Federal Republic of), Hungary, Ireland, Israel, Italy, Japan, Lebanon, Liechtenstein, Monaco, Morocco, New Zealand, Poland, Portugal, Republic of Viet-Nam, San Marino, Spain, Sri Lanka, Sweden, Switzerland, Syrian Arab RepUblic, Tunisia, Turkey, United Kingdom TAO/I/2 page 8 32. The scope of the Stresa Convention is confined to a very special field, that of cheeses. Moreover, with two exceptions, only appellations of origin relating to cheeses made of milk other than cows' milk may be protected. 33. The appellation of origin concept is not actually defined in the Stresa Convention. However, Articles 3 and 5(4) (b) require that the appellation be the subject of internal legislation and that it designate cheeses manufactured or matured by virtue of local, loyal and uninterrupted use.within the confines of the traditional regions from which they derive their typical characteristics. It should be noted that a requirement for internal regulation of some kind is to be found also in the Lisbon Agreement; indeed it is one of the major weaknesses of that Agreement (see paragraph 45). 34. As far as the extent of protection is concerned, the Stresa Convention represents an advance in relation to previous multilateral treaties. Under Article 1, it is not necessary for the false appellation to have been affixed on the cheese itself: it need only have appeared on wrappings, invoices, waybills or busine_ss_ papers, or in advertising, marks, names, inscriptions, and illustrations. In addition, Article 3 provides that appellations of origin shall be protected not only if they .are used alone or with a qualifying term, but also if they are accompanied by a corrective term such as "Eype , II "kind, II "Lmd t a t Lon " or the like; moreover, under Article 1 they are protected in any language. 35. The procedure for obtaining protection is laid down in Article 5. Any Contracting Party wishing to have an appellation of origin protected in the other Contracting Parties must request its inclusion in an Annex to the Stresa Convention, enclosing with its request the text of the relevant internal legislation and all documents which demonstrate that the appellation concerned has been used in the requesting country to designate, by virtue of local, loyal and constant use, cheeses originating in, and possessing characteristics typical of, a defined region. The request is examined by a Permanent Council consisting of one representative of each Contracting Party, which decides on the inclusion of the appellation concerned by a majority of three-fourths of all its members. Each Contracting Party is granted a maximum grace period of two years during which to comply, with respect to its internal market, with the obligations deriving from the inclusion of the appellation. 36. In practical terms, the Stresa Convention is comparable neither to the Paris Convention nor to the Madrid Agreement (Indications of Source). On one hand, it is confined to the protection of appellations of origin relating to a particUlar type of product, and in fact applies only to the appellations II Roquefort , II llPecorino Romano, n "Gorqonz o La'' and "Parmigiano Reggiano." On the other hand, while eight States were bound by it in 1973, the membership has fallen to six l as a result of the successive denunciations by Sweden (with effect from March 10, 1974) and Norway (with effect from September 5, 1974). One of its provisions, however, goes further than both of the other instruments mentioned, namely Article 3, which prohibits the use of corrective terms. On the other hand, the Stresa Convention is not self-executing and does not oblige the Contracting Parties to impose specific sanctions. Lisbon Agreement 37. The international protection of appellations of origin available prior to 1958 under the Paris Convention and the Madrid Agreement (Indications of Source) was inadequate in the eyes of certain countries. Since it was evident that revision of these two instruments had to remain within certain limits and therefore could not create an entirely satisfactory situation for those countries, it seemed necessary to draft a new multilateral treaty within the framework of the Paris Union. A draft agreement prepared by BIRPI was submitted to the Lisbon Diplomatic Conference in 1958. On October 31, 1958, the Conference adopted the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration, as well as Regulations for the implementation of the Agreement (hereinafter referred to as "the Regulations"). The Lisbon Agreement entered into force on September 25, 1966. It has since been revised at the Stockholm Diplomatic Conference (1967), but the revision related only to the administrative provisions and did not affect either the substantive provisions of the Agreement (apart from adapting them to the new terminology) or the Regulations. The Stockholm Act of July 14, 1967, entered into force on 1 Austria, Denmark, France, Italy, Netherlands, Switzerland TAO/I/2 page 9 October 31, 1973. At the present time, the Special Union constituted by the States bound by the Lisbon Agreement comprises 11 members. The limited geographical scope of the Lisbon Union is due to particular characteristics of the substantive provisions of the Agreement, that is, of its fi.rst eight Articles. It is therefore only the first eight Articles, and the corresponding provisions of the Regulations, that will be commented on in the following paragraphs, albeit in a different order from that in which they appear in the Lisbon Agreement, which is somewhat unsatisfactory from a systematic standpoint. The most recent text of the Lisbon Agreement and the text of the Regulations are reproduced in document TAO/I/3. 38. Article 1(1) of the Lisbon Agreement provides for the establishment of a Special Union within the framework of the Paris Union. 39. Article 2(1) contains a definition of the appellation of origin concept. The draft prepared by BIRPI did not include such a definition, but it was added by the Lisbon Diplomatic Conference. In terms of Article 2(1), appellation of origin means "the geographical name of a country, region or locality which serves to designate a product originating therein the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors." (Except on matters of detail, this definition corresponds to the one appearing in paragraph 8 of this document.) It follows from the presence of this definition in the Lisbon Agreement that only names conforming to the definition may be protected by virtue of that instrument. Qualified and simple indications of source are thus excluded from the purview of the Lisbon Agreement. This limitation is one of the characteristic features of the Agreement; it prevents the access~on of countries which are unfamiliar with the appellation of origin concept,· and which may nevertheless be interested in having some of their indications of source protected under the Agreement. Admittedly the definition is phrased in quite broad terms, and the countries of the Lisbon Union tend to give it a wide interpretation; the fact remains, however, that it is bound to impose certain limitations which do not seem essential to the efficient operation of the system. 40. The first element of the definition is that the appellation must be the geographical name of a country, region or locality. If these words are interpreted strictly, the name must be one used on maps, but the Council of the Lisbon Union (which, under the original 1958 text of the Lisbon Agreement, has the tasks entrusted by the 1967 Stockholm Act to the Assembly of that Union) allowed, at its fifth session in 1970 (see document AO/V/8, paragraph 19), a broad interpretation covering names which, for certain products, have acquired a geographical character through use or by virtue of an administrative decision. In the course of the same session the Council of the Lisbon Union also accepted that Article 2(1) did not rule out the possibility of having geographical names accompanied by the name of the product concerned or by a qualifying word relating to the product, on the understanding that the protection resulting from registration did not extend either to the name of the product itself or to the qualifying word itself (see document AD/V/8, paragraph 18). Finally, the word "locality" may be too restrictive, and that is why the Model Law uses instead the expression "specific place," which can cover, for instance, a town district, a suburb or a hamlet. 41. The second element of the definition is that the appellation of origin must serve to designate a product originating in the country, region or locality referred to. Simple indications of source are ruled out by this second element inasmuch as they do not serve to designate products. According to Article 2(1), appellations of origin may apply to all products, whether natural products or products of handicraft or industry, but they may not designate services. 42. The third element of the definition is that there must be a qualitative link between the product and the geographical area: the "quality and characteristics" (to which the Model Law prefers the words "characteristic qualities ll ) must be due exclusively or essentially to the geographical environment. If the qualitative link is insufficient, that is, if the characteristic qualities are due not essentially, but only to a small extent, to the geographical environment, the name is not an appellation of origin but merely an indication of source (simple or qualified) or even a generic name. As for the geographical environment, it includes natural factors, such as soil or climate, and human factors, such as the special professional traditions of the producers established in the 1 Algeria, Cuba, Czechoslovakia, France, Haiti, Hungary, Israel, Italy, Mexico, Portugal, Tunisia TAO/I/2 page 10 geographical area concerned. The conjunction "and" gives rise to some uncertainty in that the text may be interpreted to mean that a combination of both factors, in varying proportions, is always necessary; in other words, a name would not be an appellation of origin, according to this interpretation, if the geographical environment consisted either of purely natural factors or of purely human factors. ·Such a restrictive interpretation is more unfavorable to products of industry, the characteristic qualities of which are determined often by purely human factors, than to agricultural products, where there is little doubt that purely natural factors may be sufficient. It.is to eliminate the possibility of a restrictive interpretation that the Model Law defines the geographical environment as including either natural factors or human factors or both natural and human factors. 43. Even if it is drafted and interpreted very broadly, the definition of appellation of origin given in Article 2(1) has a serious drawback which prevents certain countries from acceding to the Lisbon Agreement. These are the countries whose denominations eligible for protection apply not to agricultural products or products of handicraft but to products of industry. The difficulty arises from the fact that Article 2(1) requires the existence of a qualitative link between the geographical environment and the product, even though the presence of purely human factors would be considered sufficient. This link, which existed at the start of the manufacture of the industrial product, may sUbsequently have been stretched to the point that its existence is difficult to prove, although the name has not become a purely generic term; in other words, the name gives a certain reputation to the product which bears it, in spite of the doubt concerning the geographical link, and therefo~e constitutes a qualified indication of source (see paragraph 10). This category of names is outside the scope of the Lisbon Agreement in view of the definition in Article 2(1); the question then arises whether the definition should not be simply deleted. It seems difficult, in any case, to amend it by removing the requirement of the qualitative link between the product and the geographical environment as it would then be deprived of its essential element. As will be seen below, the majority of bilateral treaties do not contain definitions of the objects of protection, as the system of negotiated lists makes such definitions superfluous. 44. Article 1(2) of the Lisbon Agreement provides that the countries of the Special Union undertake to protect on their territories, in accordance with the terms of the Agreement, the appellations of origin of products of the other countries of the Special Union, recognized and protected as such in the country of origin and registered at the International Bureau of WIPO. Therefore, in order to be protected under the Lisbon Agreement, an appellation of origin of a country of the Special Union must, according to Article 1(2), meet two conditions as well as conform to the definition in Article 2(1): first, it must be recognized and protected as such in the country of origin (the latter being defined in Article 2(2)); secondly, it must be the subject of an international registration. 45. The first condition, that the appellation must be recognized and protected "as such" in the country of origin, is one of the main obstacles to the territorial extp.nsion of the Lisbon Union. The expression means that it is not sufficient for the country to protect its appellations in a general way: each individual appellation still has to benefit from distinct and express protection deriving from a specific act (used in its widest sense--see paragraph 11). In terms of Article 1.5 of the Regulations, the specific act may be a legislative or administrative provision or a jUdicial decision; it may also be a national registration. While Article 1.5 does not in fact mention the latter possibility, the words "as such" in Article 1(2) of the Lisbon Agreement do not exclude it, and they should be interpreted to mean that prior protection in the country of origin must derive from an official act. The act determines the specific elements of the object of protection (the circle of lawful users of the appellation of origin, the nature of the product, the geographical area); these elements must be indicated in the application for international registration in accordance with Article 1 of the Regulations. Yet, in a number of countries, it is only in a few exceptional cases that such specific acts exist. While this fact alone does not prevent those countries from acceding to the Lisbon Agreement, they nevertheless cannot apply for international registration of all the names which they wish to have protected, even if the names correspond to the definition in Article 2(1), and this diminishes the practical value of accession. TAO/I/2 page 11 46. The second condition laid down by Article 1(2) is that the appellation of origin must be registered with the International Bureau. Articles 5 and 7 of the Agreement itself and the Regulations set forth the procedure for registration. 47. Article 2(2) defines the country of origin as being "the country whose name, or the country in which is situated the region or locality whose name, constitutes the appellation of origin which has given th~ product its reputation." This definition does not call for any special comment, except that the appellation must give the product in question a certain reputation. It is probable that the latter condition is not very different, in the context of the Lisbon Agreement, from that of the link between the geographical environment and the characteristic qualities of the product; in any case it does not appear to be an additional condition in relation to the definition of appellation of origin in Article 2(1). If the concepts defined in the two paragraphs of this provision do not correspond, at least from the point of view of form, it is because the definition of the country of origin already appeared in the BIRPI draft, whereas that of the appellation of origin was added by the Lisbon Diplomatic Conference. 48. Article 5(1) of the Lisbon Agreement and the corresponding provisions of the Regulations define the procedure for international registration. International registration must be applied for by the competent Office of the country of origin, and therefore may not be requested by interested parties. The national Office, however, does not apply in its own narn~ for international registration, but in that of " a n y natural persons or l~gal entities, public or private, having a right to use (titulaires du droit d'user)" the appellation, according to their national legislation. The use of the word "titulaires" in this paragraph, and "owner or owners" in Article 1.1 of the Regulations, under which an indication of the owner or owners of the appellation of origin must be given, may be questioned, as it suggests an exclusive right, comparable to a trademark right, which is granted to a circle of persons who may be listed by name, whereas the right to use an appellation of origin belongs to all persons who fulfill certain conditions (activity in the geographical area concerned, manufacture of products corresponding to the minimum criteria applicable to the appellation concerned). Instead of owners it would be preferable to speak of beneficiaries, for instance. In this connection, the Council of the Lisbon Union accepted, at its fifth session in 1970, that it was not necessary for the owners of the right to use the appellation of origin to be indicated by name: it was sufficient that the circle of owners be clearly defined (see document AO/V/8, paragraph 20). Article 1 of the Regulations lists the particulars which must accompany the application for registration. The International Bureau has no competence to examine the application with respect to substance; it may only make an examination as to form and, where necessary, cause the application to be put in order by the Office which filed it (Article 3 of the Regulations). If the application is in order as to form, the International Bureau registers the appellation by entering it in two Registers, of which one is a general Register and the other a special Register for each country of the Special Union (Article 2 of the Regulations). Under Article 5(2) of the Lisbon Agreement, the International Bureau notifies the registration without delay to the Offi~es of the countries of the Special Union and publishes it in the periodical ilLes Appellations d'origine" (Article 5 of the Regulations) • 49. In accordance with Article 5(3) to (5) of the Lisbon Agreement, the Office of any country of the Special Union may, within a period of one year from the receipt of the notification of registration, declare that it cannot ensure the protection of a given appellation. Apart from the time limit mentioned, the right of refusal is subject to only one condition: the grounds for refusal must be indicated. The grounds which may be given are not specified, however, which in fact gives each country the discretionary power to accept or refuse to protect a registered appellation of origin. The declaration of refusal is not detrimental, in the country concerned, to the other forms of protection of the appellation which may be available under Article 4, namely, under other international instruments such as the Paris Convention and the Madrid Agreement (Indications of Source), or by virtue of national legislation or court decisions. The declaration of refusal must be communicated as soon as possible by the International Bureau to the Office of the country of origin; such communication enables the Offices concerned to initiate negotiations for the withdrawal of the refusal; in addition, the Office of the country of origin must advise the party concerned of the declaration, so that the latter may resort, in the country Which made the declaration of refusal, to all the judicial and administrative remedies available to nationals of that country. It should also be pointed out that Article 14(2) (c) allows countries acceding to the Lisbon Agreement to exercise, during a period of one year, the right of refusal with respect to appellations of origin already TAO/I/2 page 12 registered with the International Bureau. The refusal procedure described above lacks flexibility and is one of the weaknesses of the Lisbon Agreement. There is, of course, a possibility of negotiation between the countries concerned, but such negotiations are not organized on a systematic basis and may only be initiated after a refusal by one of the parties, which is not likely to contribute to their success. It would be preferable to give member states more latitude for negotiations at the bilateral level. 50. In all countries not having made a declaration of refusal, the registered appellation enjoys full protection. However, if third parties have been using the appellation in a given country prior to the notification of the registration, the Office of that country may, under Article 5(6) of the Lisbon Agreement, grant them a maximum of two years in which to terminate such use; the Office concerned must advise the International Bureau accordingly, and the latter publishes the authorization in accordance with Article 5 of the Regulations. 51. The protection deriving from the registration is in principle unlimited in time: Article 6 of the Lisbon Agreement provides that an appellation which has been granted protection cannot be deemed to have become generic as long as it is protected as an appellation of origin in the country of origin. This provision is a considerable improvement on the Paris Convention and the Madrid Agreement (Indications of Source), which do not contain a similar provision. Thus Article 7 provides that the registration need not be renewed and is sUbject to payment of a single fee. For a registration to cease to be valid, either the appellation concerned must have become a generic name in the country of origin, or the registration must have been cancelled, in accordance with Article 4(4) of the Regulations, at the request of the national Office which had applied for it. 52. The content of the protection afforded to an appellation of origin registered under the Lisbon Agreement, which is defined in Article 3, is very extensive. Any usurpation or imitation of the appellation is prohibited, even if the true origin of the product is indicated or if the appellation is used in translated form or qualified by terms such as "k Lnd ;" "type," "make," "imitation," or the like. The extension of protection to translations and the prohibition of qualifying terms, which are already provided for in the Stresa Convention, represent a considerable advance in relation to the Paris Convention and the Madrid Agreement (Indications of Source) . 53. Article 4 of the Lisbon Agreement recalls the principle that the protection afforded by other international instruments and by national legislation or court decisions is in no way excluded. As examples of such international instruments, Article 4 mentions the Paris Convention and the Madrid Agreement (Indications of Source), but it goes without saying that the Stresa Convention and bilateral treaties are also included among those instruments. 54. With regard to the legal action necessary for ensuring the protection of appellations of origin, Article 8 of the Lisbon Agreement refers to national legislation in respect of the nature and the exercise of such action. However, it specifies that the right to take such action belongs to the competent Office and the public prosecutor on one hand, and to any interested party, whether a natural person or a legal entity, whether public or private, on the other. On the latter point the Lisbon Agreement goes further than the Madrid Agreement (Indications of Source), which does not allow private individuals to take direct action (see paragraph 26). Another improvement in the Lisbon Agreement, as compared also with the Paris Convention, isthat it not only makes mandatory the application of purely administrative sanctions such as seizure, but stipulates that all the sanctions provided for in national legislation, whether civil (injunctions restraining or prohibiting unlawful acts, actions for damages, etc.), penal or administrative, may be applied. The latter improvement is more apparent than real, however, in view of the fact that the national treatment principle obliges a country which is a member of the Paris Union or party to the Madrid Agreement (Indications of Source) to allow nationals of the other countries of the Union or Agreement to avail themselves of all civil and penal sanctions provided under its law; moreover, the Lisbon Agreement does not place States under an obligation to provide for civil and penal sanctions. 55. In 'conclusion, there are some points on which the Lisbon Agreement unquestionably improves on the other multilateral conventions, but it does have particular characteristics which make it difficult for certain countries to accede to it and which explain why the Lisbon Special Union has only 11 members at the present time. The main improvements achieved by the Lisbon Agreement in relation TAO/I/2 page 13 to the Paris Convention and the Madrid Agreement (Indications of Source) are the principle it contains according to which the use of corrective or qualifying terms is prohibited (Article 3) and the rule which prevents a registered appellation of origin from beooming a generic name as long as no such change has taken place in the country of origin (Article 6). As for the main problems raised by the Lisbon Agreement, they may be summarized as follows: the definition of appellation of origin is too narrow (Article 2(1)); the requirement of prior recognition and protection under a specific official act in the country of origin is not very compatible with the system of protection by general legislative provisions for the repression of deceptive practices (Article 1(2)); the mandatory indication of the owners of the right to use the appellation in whose name the international registration must be applied for is also difficult to reconcile with the abovementioned system (Article 5(1)); in the absence of any definition in the Agreement of what constitutes valid grounds for refusal, the complete freedom thus accorded to each State to refuse to afford protection to a registered appellation seems excessive, and the refusal procedure is too inflexible, since negotiations between interested States can only be initiated after refusal (Article 5(3) to (5)). It should also be mentioned that the Lisbon Agreement has been criticized for not expressly prohibiting the monopoly, as individual marks or trade names, of appellations of origin registered with the International Bureau. In addition, the Lisbon Agreement does not provide for the application of the law of the country of origin, except for the determination whether an appellation has become a generic name (Article 6); as a result, the question of usurpation or imitation in a specific case will be decided in accordance with the law of the country in which protection is sought, a situation that is unlikely to ensure that products embody all the characteristic qualities required. Other multilateral conventions 56. Before concluding the chapter on the international protection of appellations of origin and other indications of source at the multilateral level, two other multilateral conventions should be mentioned, namely, the International Olive Oil Agreement and the Convention Relating to the Protection of Appellations of Origin concluded by the States party to the Libreville Agreement Relating to the Creation of an African and Malagasy Industrial Property Office (OAMPI). 57. The International Olive Oil Agreement of 1963 contains some provisions on appellations of origin and indications of source. In Article 11(1), for instance, it provides that appellations of origin or indications of source, when given, may only be applied to virgin olive oils produced exclusively in the country, region or locality mentioned or coming exclusively therefrom. Some twenty countries l are at present bound by this Agreement, of which Chapter V (Articles 8 to 12) is reproduced in document TAO/I/3. 58. The Convention Relating to the Protection of Appellations of Origin, concluded in Abidjan on January 10, 1969, by the 13 States 2 party to the Libreville Agreement Relating to the Creation of an African and Malagasy Industrial Property Office (OAMPI) , of September 13,1962, provides, in Article 1, that appellations of origin shall be protected on the territory of the Contracting States according to the provisions of a Uniform Law annexed to the Convention, of which it forms an integral part (Industrial Property, 1970, p. 387). The Uniform Law is in harmony with the Lisbon Agreement. Article 1, for instance, establishes a definition of appellation of origin substantially identical with that of Article 2(1) of the Agreement. Article 12 provides that, subject to reciprocity in respect of national appellations of origin, foreign appellations of origin recognized and protected as such in the country of origin are eligible as of right for protection under the Uniform Law. The first paragraph of Article 13 contains a very interesting provision which is in advance of those of all the multilateral conventions examined in this chapter since it provides that lithe exclusive right to a foreign appellation of origin shall be determined by the law of the country in which the region or locality giving its name to the appellation of origin is situated. 1I The text of the Convention and of the Uniform Law is reproduced in document TAO/I/3. 1 Algeria, Argentina, Belgium-Luxembourg Economic Union, Dominican Republic, Egypt, France, Germany (Federal Republic of), Greece, Israel, Italy, Libyan Arab Republic, Morocco, Panama, Portugal, Spain, Syrian Arab Republic, Tunisia, Turkey, United Kingdom, Yugoslavia Cameroon, Central African Republic, Chad, Congo, Dahomey, Gabon, Ivory Coast, -----~- .. -~~~~~~ N1~~r. ~eneaal. ToqO, Upper Volta 2 TAO/I/2 page 14 III. International protection of appellations of origin and other indications of source at the bilateral level 59. In addition to the multilateral conventions, bilateral treaties also afford protection to appellations of origin and other indications of source at the international level. The system of bilateral treaties has the advantage for contracting parties of making it easier to take account o~ the specific features of individual cases. Its success, moreover, has grown since the conclusion of the Lisbon Agreement, owing to the inability of some countries to accede to the latter Agreement in its present form. The bilateral treaties concluded in the course of the last fifteen years are therefore of very great interest: the solutions adopted by them are an indication of the most recent developments in the international regulation of this matter, and they give an idea of the direction that might be followed at the multilateral level. Before commenting on recent bilateral treaties, however, a few words should be said about those concluded before 1958. Bilateral treaties concluded prior to the Lisbon Agreement 60. Before 1958 there were barely any bilateral treaties dealing solely with the protection of appellations of origin and other indications of source. Such protection was generally the subject of one or more provisions incorporated in treaties of a wider scope, for instance treaties of commerce, friendship or navigation, or agreements on industrial property in general. Thus almost all the trade agreements concluded by France contain a clause on the protection of appellations ox origin; for instance, Article 21 of the Commercial Agreement concluded with the Belgium-Luxembourg Economic Union on February 23, 1928 (La Propriete industrielle, 1952, p. 117). Other provisions of the same type that may be mentioned here are the fOllowing: Article 17 of the Treaty of Commerce and Navigation between Italy and Portugal, of August 4, 1934 (La Propriete industrielle, 1947, p. 95), Article 20 of the Treaty of Commerce and Navigation between the Federal Republic of Germany and Portugal, of August 24, 1950 (La Propriete industrielle, 1950, p. 246), Articles 13 and 14 of the Agreement on the Restoration of Industrial Property Rights and the Protection of Indications of Source between the Federal Republic of Germany and Cuba, of March 22, 1954, and Article 22 of the Agreement on Trade and Finance between Italy and Argentina, of November 25, 1957. These provisions are of three kinds: some regulate the specific case of certain appellations (Treaty between Italy and Portugal, Treaty between the Federal Republic of Germany and Portugal), others lay down general principles (Agreement between France and the Belgium-Luxembourg Economic Union, Agreement between Italy and Argentina), others again lay down both general principles and specific rules for certain appellations (Agreement between the Federal Republic of Germany and Cuba). By way of example, the relevant provisions of the Agreement between France and the Belgium-Luxembourg Economic Union and of the Treaty between Italy and Portugal are reproduced in document TAO/I/3. It will be noticed that the sanctions provided for in both instruments are purely administrative, but that the protection offered is extensive, since provision is made for measures of repression against the use of terms qualifying the appellations concerned. 61. The Agreement between the Austrian Federal Government and the Italian Government Relating to Geographical Appellations of Origin and Denominations of Certain Products, of February 1, 1952 (La Propriete industrielle, 1952, p. 64), is a special case in that it is entirely devoted to the protection of geographical denominations. The texts of that Agreement and of the Additional Protocol of December 17, 1969, which established new lists of protected indications are reproduced in document TAO/I/3. It should be noted that the Agreement concerned provides for the repression of the use of terms qualifying the appellations and denominations concerned and for the application of all the measures prescribed by national legislation. Bilateral treaties concluded since 1960 62. The beginning of the nineteen-sixties marked the start of a new era in the international protection of appellations of origin and other indications of source. A series of bilateral treaties were concluded which embodied new solutions designed to remedy the weaknesses of the multilateral conventions and of any earlier bilateral treaties. Between 1960 and 1964, four treaties were concluded: the Agreement between the Federal RepUblic of Germany and the French Republic on the Protection of Indications of Source, Appellations of Origin and Other Geographical Denominations, of March 8, 1960 (hereinafter referred to as lithe Franco-German Agreement") TAO/I/2 page 15 (La Propriete industrielle, 1960, p. 213); the Agreement between the Federal Republic of Germany and the Italian Republic on the Protection of Indications of Source, Appellations of Origin and Other Geographical Denominations, of July 23, 1963; the Agreement between the Federal Republic of Germany and the Kingdom of Greece on the Protection of Indications of Source, Appellations of Origin and Other Geographical Denominations, of April 16, 1964; the Convention between the French Republic and the Italian Republic on the Protection of Appellations of Origin, Indications of Source and Denominations of Certain Products, of April 28, 1964 (hereinafter referred to as lithe Franco-Italian convent.Lon") (Industrial Property, 1969, p. 253). The substantive provisions of the first three agreements are for the most part identical, apart from some differences of a purely formal nature; the fourth of these treaties contains more differences, largely owing to the fact that it is the successor to a bilateral agreement concluded between France and Italy in 1948, but it repeats the main substantive rules of the Franco-German Agreement. Thus the comments in the following paragraphs which refer to the Franco-German Agreement are equally valid for the other three treaties. Four other bilateral treaties in force at present were concluded since 1967: on the one hand, the Treaty between the Swiss Confederation and the Federal Republic of Germany on the Protection of Indications of Source and Other Geographical Denominations, of March 7, 1967 (hereinafter referred to as lithe Germano-Swiss Treaty ll ) (Industrial Property, 1969, p. 63), and the Treaty between the Federal Republic of Germany and the Spanish State on the Protection of Indications of Source, Appellations of Origin and Other Geographical Denominations, of September 11, 1970 (hereinafter referred to as "the HispanoGerman Treaty"), both Treaties being almost identical in substance; on the other hand, the Agreement between the Republic of Austria and the Kingdom of Greece on the Protection of Indications of Source, Appellations of Origin and Denominations of Products of Agriculture and Industry, of June 5, 1970 (hereinafter referred to as "the Austro-Greek Agreement"), and the Agreement between the Republic of Austria and the Hungarian People 1 s Republic on the Protection of Indications of Source, Appellations of Origin and Other Denominations Indicating Sou~ce, for Products of Agriculture and Industry, of July 21, 1972 (hereinafter referred to as "the AustroHungarian Agreement"), both Agreements being very similar as to substance. In view of the fact that the main innovations in relation to the Franco-German Agreement were introduced by the Germano-Swiss Treaty and the Austro-Greek Agreement, the comments on those innovations in the following paragraphs will generally refer only to the last two instruments. The texts of the eight treaties referred to in this paragraph are reproduced in document TAO/I/3, together with the texts of their annexes as currently in force. 63. All the bilateral treaties concluded since 1960 have the same structure. In addition to the actual text of the treaty, there is on the one hand a protocol which forms an integral part of the treaty and regulates in more detail the application of certain of its provisions, and on the other hand there are lists of the denominations of each Contracting State. Sometimes there is also an exchange of letters, which forms an integral part of the treaty. 64. The Franco-German Agreement contains no definition of its subject-matter. Unlike the Lisbon Agreement, it is not confined to appellations of origin as defined in Article 2 (1) of that Agreement. It covers also any indication of source or geo·graphical denomination, provided that it appears in the lists annexed to the Aqr-e ement. The title of the Franco-German Agreement reflects this broad approach, as does the use of the term "denominations" in the text of the various prOVisions. The Austro-Greek Agreement, however, does contain a definition of its sUbjectmatter, but in very broad terms: II indications of source," "appellations of origin" and "denominations" mean all indications relating directly or indirectly to the source of a product. Such an indication generally consists of a geographical denomination, but it may also consist of other indications provided that, when used in connection with a product so designated, the indication is seen in interested business circles in the country of origin to be a reference to the country of production. Such denominations may also contain an affirmation of the quality of the product concerned. The special characteristics of the product must be due exclusively or essentially to geographical or human factors (Article 2(2) of the Austro-Greek Agreement). 65. The question of the scope of protection is not dealt with very clearly by the Franco-German Agreement. What has to be established is whether the denominations appearing in the lists enjoy absolute protection or whether their protection is merely relative, as in the case of trademarks; in other words, are these denominations always protected irrespective of the nature of the products for which they are used, or are they protected only in relation to their use in connection with the products to which they are assigned in the lists? Interpreted literally, the TAO/I/2 page 16 Franco-German Agreement grants absolute protection, but the German courts, while recognizing this principle, have tempered it by ruling that protection ceases to be effective, under the rules of unfair competition, if the denomination appearing in one country's list in no way suffers from the use of an identical denomination in the other country. For its part, the Germano-swiss Treaty provides a specific solution to the problem by making a distinction between denominations which are entitled to absolute protection and those which are not. Absolute protection is afforded to the names of the two countries and of their cantons and Lander (Articles 2(1) and 3(1» and to denominations included in the lists which have a special reputation or appeal (Articles 2(2), item 2, and 3(2), item 2). As for the other denominations included in the lists, their status is as follows: they may in principle be used for products other than those to which they are assigned in the lists; protection is absolute, however, where use is capable of having an adverse effect, in the field of competition, on enterprises that are lawfully using the denomination for products of the country of origin, unless there is a legitimate interest in using the denomination for products of a country other than the country of origin (Articles 2(2), item 1, and 3(2), item 1); nevertheless, in all cases, including those where there is nO likelihood of an adverse effect in the field of competition or if there is a legitimare interest in using the denomination, protection is absolute if its use gives rise to a deceptive indication within the meaning of Article 5 (Articles 2(5) and 3(5)). In practice the scope of the protection afforded by the Germano-swiss Treaty is very similar to that offered by the Franco-German Agreement as interpreted by the German courts. The Germano-Swiss Treaty has another special feature which is not found in other treaties: it provides that Articles 2 and 3 of the Treaty are applicable neither to denominations for animal breeds nor to denominations for plant varieties, in so far as the latter are regarded as such by the Convention for the Protection of New Varieties of Plants (Paris, 1961), and on condition that the said Convention is in force in relations between the Contracting States (paragraph 2 of the Protocol annexed to the Germano-Swiss Treaty). 66. One of the most important rules enshrined in recent bilateral treaties is that the denominations appearing in the list of either of the Contracting States shall be reserved, on the territory of the other Contracting State, for products of the country of origin (Articles 2 and 3 of the Franca-German Agreement). This rule has the advantage of simplicity, and it facilitates greatly the application of bilateral treaties: indeed, in the majority of cases it is easy to establish that a product does not come from the country of origin; there is no need to determine the exact source, but only the fact that the product is not a product of the country of origin. This principle is of particular interest for denominations which have become generic names in the country of origin but have retained, in the importing country, a geographical character evoking the country of origin; these denominations are also reserved in the importing country for products of the country of origin~ provided that they are included in that country's list; they are covered by the expression "other geographical denominations II which appears in the title of the Franco-German Agreement. 67. Another essential principle enshrined in recent bilateral treaties, with the exception of the Austro-Greek and Austro-Hungarian Agreements, is that of the application of the law of the country of origin (Articles 2 and 3 of the FrancoGerman Agreement). This means that the denominations of each Contracting State may only be used in the other State under the conditions prescribed by the legislation of the country of origin. In the event of a dispute, the courts of the importing country must apply the law of the country of origin to determine the conditions for the use of the denomination concerned. In practice, this rule represents a strengthening of protection and is therefore an important step forward. However, the principle of the application of the law of the country of origin is not absolute: the importing country is not obliged to apply the legislative and administrative provisions of the country of origin in regard to administrative supervision, in particular those relating to the maintenance of entry and exit records and the movement of the products or merchandise covered by the protected denominations (Articles 2 and 3, second sentence, of the Franco-German Agreement, and paragraph 1 of the Protocol annexed to that Agreement) . 68. Certain treaties provide that a protected denomination may in principle be used not only for the products of the country of origin, but also, under certain conditions, for those corning from a region or locality with the same name, even if that region or locality is situated in a different country (Articles 2(3) and (5) and 3(3) and (5) of the Germano-Swiss Treaty). The same treaties also allow the person whose name (or trade ,name) corresponds to a protected denomination to continue using his name--except as a mark, unless he has a legitimate interest in TAO/I/2 page 17 doing so--provided that there is no risk of deception (Articles 2(4) and (5) and 3(4) and (5) of the Germano-Swiss Treaty); in other treaties the use of proper names corresponding to protected denominations is also authorized, subject to certain reservations (Articles 6(2) and 7(2) of the Austro-Greek Agreement). 69. Broadly speaking, the content of protection is regulated along the same lines in all the bilateral treaties. The denominations appearing in the lists are protected against unlawful use on the-products themserves, on their get-up or outer packaging, in business papers or in advertising (Article 4(1) of the Franco-German Agreement). As provided in the Lisbon Agreement (Article 3), protection is effective even if the denominations are used in translation, or with an indication of the true source, or with the addition of terms such as "kind,'" "type,1I "make," "imitation," or the like (Article 4(2) of the Franco-German Agreement). On the other hand, the bilateral treaties are not applicable to products in transit (Article 4(3) of the Franco-German Agreement); this principle is also written into the Madrid Agreement (Indications of Source) (Article 2(2)). From the GermanoSwiss Treaty onwards, it has also been provided that the use of a protected denomination in a modified form is unlawful if a risk of confusion in the trade still remains despite the modification (Article 4(2)); the German courts have applied a similar rule on the basis of the Franco-German Agreement. The Austro-Greek Agreement introduces yet another innovation: protection does not extend to the translation of a protected denomination of one of the Contracting States where the translation in the language of the other Contracting State is a word in everyday use (Article 8(3)). 70. As for the sanctions applicable, the bilateral treaties simply refer to the jUdicial and administrative remedies provided for under the law of the Contracting State in which protection is sought (Article 4(1) of the Germano-Swiss Agreement). On the other hand, with the exception of the Franco-Italian Convention, the bilateral treaties contain precise rules on the right to bring actions: they provide that it shall not orlly be the natural persons and legal entities entitled to bring such actions under the law of the country in which protection is sought that shall have this right, but also, under certain conditions, associations, groups and bodies that .represent the producers, manufacturers or traders concerned and have their registered office in the country of origin (Article 7 of the Franco-German Agreement). In this respect, the Germano-Swiss Treaty introduces two innovations (Article 6): first, the expression "persons and companies" is used instead of "natural persons and legal entities," thus including companies which, under German and Swiss law, have the right to be party to legal proceedings without actually having legal personality, and secondly the right to bring actions is conferred also upon groups of consumers. 71. One of the most important provisions of the bilateral treaties is the general prohibition of deception: protection is also given where, in respect of products or their get-up or outer packaging or in business papers or in advertising, use is made of distinctive signs, trademarks, names, written matter or graphic representations which directly or indirectly contain false or deceptive indications as to the source, origin, nature, variety or essential properties of the products (Article 5 of the Franco-German Agreement). This provision is broader than Article 3~ of the. Madrid Agreement (Indications of Source) (see paragraph 28): it is self-executing; it applies to all indications, even those which are not in the nature of publicity; it provides for the prohibition of the use in the course of trade of false or deceptive indications, not only as to the source or origin of the product, but also as to its nature, var-iety or essential properties--in this respect the titles of the bilateral treaties seem too restricted, as the indications here are not only indications of "source" or " o rigin," neither are the denominations merely "geographica1." 72. The Germano-Swiss Treaty contains a special provision linked with the general prohibition of deception (Article 5(2)). It is based on the idea that geographical representations or words which, on account of their familiarity, symbolize a given country tend to be misleading if they are used for products not originating in that country. This provision establishes a presumption under which geographical denominations and representations or words of a geographical character which are associated with the country of origin (for instance, names or graphic representations of localities, buildings, monuments, rivers or mountains) are considered in the other Contracting State to be deceptive indications of source if they are used for products which do not come from the country of origin. This presumption will not, however, be operative where, in the specific case, a denomination can reasonably be understood as only being a descriptive sign or fanciful term; but it will be applicable when the term is such as to give the impression not only of a de.criptive sign but also of an indication of .ource. Und.r the AustroHungarian Agreement, the pre8~tion doea no~ s r i " if, in the .pecific ca•• , the u •• -& ~h nT ~r.nh;~ reDre •• ntatlon canno~ re•• oaably be held to b. deceptive TAO/I/2 page 18 73. Some bilateral treaties provide that each Contracting State may request the other state not to authorize importation of products covered by a protected denomination unless they are accompanied by an official document showing that they are entitled to slich,denomination (Article 6(2) and (3) of the Franco-German Agreement). This provision is designed to facilitate the application of the bilateral treaty with respect to products bearing appellations of origin. 74. The nus t rc-mreek Agreement contains an express' pr-ov Ls Lon on the relationship between protected denominations and marks under which the use of a mark registered prior to a specific date is not affe~by the Agreement (Article 11) • 75. With the exception of the Franco-Italian Convention, the bilateral treaties provide that it is permissible to use a protected denomination during a transitional period whose- length varies from treaty to treaty (Articles 8 and 9(2) of the Franco-German Agreement) (see Article 5(6) of the Lisbon Agreement). The Germano-Swiss Treaty has particularly detailed provisions on this subject which are very generous to prior users (Articles 7 and 8(2) of the Treaty and paragraphs 9 and 10 of the Protocol annexed to the Treaty). 76. All the bilateral treaties contain a provision corresponding to Article 4 of the Lisbon Agreement, recalling the principle that the provisions of these treaties shall be without prejudice to the application of the domestic law or of other international instruments protecting the denominations appearing in the lists (Article 10 of the Franco-German Agreement) . 77. The procedure for the amendment of the lists of denominations is generally the following: if a Contracting state wishes to shorten its own list, it may do so without the consent of the other Contracting State; if, on the other hand, it wishes to amend or extend its list, it must obtain the consent of the other Contracting State, the amendment or extension proposal being examined by a joint commission consisting of representatives of the Governments of the two Contracting states (Articles 9(1) and 11 of the Franco-German Agreement). 78. Most of the bilateral treaties specify, generally in the protocols annexed to them, that domestic provisions regulating the importation of products are not affected by the inclusion of denominations in the lists (paragraph 2 of the Protocol annexed to the Franco-German Agreement) . 79. In conclusion, recent bilateral treaties, which have been drafted to a large extent on account of the shortcomings of the Lisbon Agreement, enshrine solutions which eliminate these weaknesses: the sUbject of these treaties is not confined to appellations of origin .in the strict sense, recognition and protection in the country of origin by virtue of a prior official act are not required; the beneficiaries of the right to the protected denomination are not mentioned, but the denomination itself is reserved for products of the country of origin and may only be used, according to most of the treaties, in accordance with the law of the country of origin; the lists of protected denominations are drawn up by negotiation according to a flexible procedure. It is true that the bilateral treaties afford protection on the basis of unfair competition law; however, for countries in which an appellation of origin is the subject of an exclusive right of a collective character, this system is not unfavorable, on account of the principle of the application of the law of the country of origin, which in fact entails, for those very countries, an improvement compared with the Lisbon Agreement system in that the protection of the appellations of origin appearing in the lists annexed to the treaties is uniform and corresponds to the protection available in the country of origin; there is no provision to this effect in the Lisbon Agreement. The principle of the application of the law of the country of origin has been criticized on the ground that it is difficult for an authority to apply the law of a foreign country; in practice, however, this problem seldom arise., as protected denominations are reserved for products of the country of origin; in other words, whenever a protected denomination is used in connection with a product which does not come from the country of origin, it will not be necessary to apply the law of the country of origin since such use will in itself constitute an unlawful act. 80. Recent bilateral treaties have also improved upon the Madrid Agreement (Indications of Source), the most important of these improvements being the following: provision is made for the repression of false or deceptive indications of source used in translation or qualified by certain terms; all denominations included in the lists annexed to the treaties are protected against the risk of becoming generic names; sanctions are not limited to purely administrative measures like seizure, but include also civil and penal sanctions. TAO/I/2 paqe 19 IV. Measures to be considered for improving th~ international protection of appellations of origin and other indications of source at the multilateral ~ ~1. In order to improve the international protection of appellations of origin and other indications of source at the multilateral level, two courses of action could be considered: either the revision of one or other of the two existing Agreements--the Madrid Agreement (Indications of Source) and the Lisbon Agreement--in which case the revised Agreement could be made to incorporate the sUbject matter of the other, or the drafting of a new· treaty to replace both Agreements. The choice between these solutions must be made primarily in the light of two considerations, one relating to procedural questions and the other to the content of the instrument to be adopted. 82. From the point of view of procedure, the difference between the revision of an existing Agreement and the drafting of a new treaty is that, in the case of a revision of the Madrid Agreement (Indications of Source) or the Lisbon Agreement, only the countries party to the Agreement to be revised would have the right to vote at the Diplomatic Revision Conference; moreover, the new text would have to be adopted unanimously, which means that opposition by a single member country would be sufficient to bring about the failure of the revision. But, in the case of a new treaty concluded within the framework of the Paris Union, each of the member countries of the Paris Union would have the right to vote, and the new instrument could be adopted by a majority to be determined by the Diplomatic Conference itself (two-thirds, for instance). 83. As for the content of the instrument to be adopted, it could be based to a large extent on the recent bilateral treaties examined in the foregoing Chapter, rules being established which would provide a generally acceptable framework for international cooperation. 84. In the first place, the most effective means of circumventing the obstacle created by the existence in the various countries of different concepts relating to geographical denominations might be to refrain from defining the object of protection and from requiring prior protection in the country of origin based on a specific official act. Each Contracting State would draw up its list of denominations to be protected, on the basis of negotiations with the other States. Adaptation of the system of negotiated lists to the multilateral framework would not create insuperable difficulties: it would be possible to provide for a system of bilateral negotiations for the establishment of the lists, and the subsequent recording in a register of the lists thus established and of any special conditions of protection that the two States may have agreed upon regarding the use of certain denominations in their mutual relations; thus it could be provided that for each Contracting State there would be a register containing as many lists as there are other Contracting States. Such a solution would be a major innovation in relation to both the Madrid Agreement (Indications of Source), which does not provide for the registration of specific denominations, and the Lisbon Agreement inasmuch as the latter is confined to appellations of origin in the strict sense which must, moreover, be recognized and protected as such in the country of origin. 85. A second rule could be that registered denominations would be reserved for products of the country of origin. This system, which is not provided for in either the Madrid Agreement (Indications of Source) or the Lisbon Agreement, has the advantage of being easy to apply by a court before which proceedings have been brought. In this connection, it would have to be determined whether the protection of the registered denominations would in principle be limited to their use in connection with the products to which they were assigned in the lists; if there were such a limitation absolute protection could nevertheless be provided for certain denominations, in particular, the names of countries and of their territorial subdivisions, which would entail a division of each list into two separate parts. 86. A third principle could be that protected denominations should be used in another Contracting State only in accordance with the substantive conditions prescribed by the law in force in the country of origin. This rule would be an innovation in relation to both the Madrid Agreement (Indications of Sourte) and the Lisbon Agreement, except with respect to the determination of the generic character of certain denominations. The difficulty, for the authority of tae importinq country, of applying the law of a foreiqn country would in practice be larqely diminished by the fact that protected denominations would be reserved for product. of the country of origin, and that there would therefore be very few cases in which the law of the country of oriqin would have to be applied. In any event, TAO/I/2 page 20 it would be for the plaintiff, in proceedings in the importing country, to produce evidence of the conditions of protection prescribed by the law in force in the country of origin. 87. If it proved difficult, during the drafting of the instrument to be adopted, to obtain a clear majority of interested countries in favor of the application of the law of the country of origin, praviaion could be made for a reservation enabling Contracting States to exclude such application ._ far as they are concerned. . The application of the law of the importing country would not be fundamentally incompatible with the principles set forth in paragraphs 84 and 85. However, this solution would have the disadvantage of not affording uniform protection to every denomination in all Contracting Stat... In any case, the question whether a denomination has become a generic name should be a matter for the law of the country of origin. 88. Other principles enshrined in recent bilateral treaties would also have to be examined in the course of the drafting of the instrument to be adopted, in order to determine whether they should be embodied in it. Such principles include the general prohibition of deception by virtue of which the repression of false or deceptive indications is ensured not only with respect to the origin or source of the products but also with respect to their nature, variety or essential properties. Another particularly important point i. the question of extending the protection to cases where qualifying terms such as "kind," "type," "make" or "imitation" are used. 89. In view of all the problems to be solved in connection with the content of the instrument to be adopted, it seems desirable to have first as precise an idea as possible of the principles which would be acceptable to the countries concerned; Only then would it be possible to choose the best solution as to the nature of the instrument to be adopted, be it a revised text of an existing Agreement or a new treaty~ In any event, it will be necessary to improve the protection, in the light of the level attained by the existing instruments, and to broaden the geographical scope of the system as much as possible, by adopting a solution sufficiently flexible to satisfy both those countries which are interested in the protection of indications of source in general and those which are interested also in the protection of appellations of origin. 90. The Committee of Experts is invited to express its opinion on the contents of this document. LEnd of documen~7