Congressional IP Leaders: Lisbon Revisions Threaten Market Access, Undermine Trademark Rights around the Globe

WASHINGTON – Leaders on the international trade and judiciary committees in the Senate and House of Representatives expressed grave disappointment with the World Intellectual Property Organization’s (WIPO) adoption of an international intellectual property treaty without full consideration of concerns expressed by the United States and many other impacted nations.

The lawmakers expressed concern with the revisions to the Lisbon Agreement for the Protection of Appellations of Origin. Those revisions were made without meaningful input from all WIPO members, and they threaten the rights of trademark holders and users of common or generic food names. Funding for the agreement is subsidized by businesses that would be adversely affected by the revisions, adding additional concerns with the agreement. Further, the lawmakers urged that in implementing the agreement, parties should ensure that they do not impose inappropriate barriers to trade in violation of existing international trade obligations.

The Lisbon Agreement is a WIPO-administered treaty that allows parties to the agreement to simultaneously register Appellations of Origin with all parties to the agreement. While WIPO is composed of 188 member nations, only the 28 parties to the Lisbon Agreement were allowed to participate fully in the revisions. The changes substantially expand the scope of the Lisbon Agreement to allow for registration of Geographical Indications, which threaten market access for many common products, such as feta cheese, around the world.

In a letter to WIPO Director General Francis Gurry, the lawmakers called on WIPO to take actions to protect the interests of trademark owners and users of generic food names when implementing the revised agreement, and to immediately address the funding inconsistencies. They warned that WIPO’s credibility as a multinational forum to promote cooperation on intellectual property issues is at stake if it fails to adequately address these concerns.

“Our faith in WIPO as an institution has been seriously undermined by WIPO’s departure from longstanding practice when it allowed a limited group of WIPO members to amend the Lisbon Agreement, without full participation of all WIPO members in a consensus fashion, and in a way that harms market access and the intellectual property rights of stakeholders from the United States and other WIPO member countries. We urge you to take appropriate steps to rectify the funding situation and to implement the Agreement in a fair and balanced way that adequately protects the interests of trademark owners and users of generic names. We will continue to monitor closely these developments and other areas of WIPO’s work to ensure that WIPO effectively functions as a global forum for the protection of intellectual property rights,” the lawmakers wrote.

The letter was signed by Senate Judiciary Committee Chairman Chuck Grassley (R-Iowa) and Ranking Member Patrick Leahy (D-Vermont), Senate Finance Committee Chairman Orrin Hatch (R-Utah) and Ranking Member Ron Wyden (D-Ore.), House Ways and Means Committee Chairman Paul Ryan (R-Wis.) and Ranking Member Sander Levin (D-Mich.), and House Judiciary Committee Chairman Bob Goodlatte (R-Va.) and Ranking Member John Conyers, Jr. (D-Mich.).

In a February letter, the cosigners urged Gurry to ensure that all WIPO members would have an equal voice in Lisbon Agreement negotiations in order to protect market access and intellectual property rights of businesses worldwide.

The Senate Finance and House Ways & Means committees have jurisdiction over international trade policy and the Senate and House Judiciary committees have jurisdiction over intellectual property law and the U.S. Patent and Trademark Office.

Text of the letter follows:

July 15, 2015

Director General Francis Gurry

World Intellectual Property Organization

34, chemin des Colombettes

CH-1211 Geneva 20, Switzerland

Director General Gurry:

We write to express our grave disappointment in the manner by which the World Intellectual Property Organization (“WIPO”) adopted revisions to the Lisbon Agreement for the Protection of Appellations of Origin (“Agreement”). We believe that this expanded Agreement allowing for the registration of geographical indications will have significant negative ramifications for businesses world-wide that depend on the use of common or generic names or on the integrity of established trademarks. Further, we are seriously concerned about the way that the Agreement has been and will likely continue to be funded – through diversion of fees paid to the trademark and patent registration systems. We believe that it is inappropriate that the funding mechanism for the Agreement will be supported by trademark stakeholders that will be adversely impacted by the agreement.

As the multilateral organization charged with generating consensus on intellectual property issues, WIPO had a unique opportunity to foster such an agreement on geographical indications. Consistent with longstanding WIPO practice, and in the interests of transparency and basic procedural fairness, the views of all WIPO members should have been taken fully and equally into account in the Lisbon Agreement revision process. The involvement of the full WIPO membership in treaty revisions is a precedent that has been followed for the last quarter century out of a recognition that the legitimacy of WIPO treaties depends on meaningful consideration of widely varying global viewpoints on intellectual property policies. A WIPO treaty must not be a vehicle for a select few countries to impose their preferred system throughout the world.

Yet in a break with past precedent, WIPO members were not allowed meaningful participation rights and there was not a consensus of all members in favor of adoption of the Agreement. We trust that you share our view that the disregard for the concerns of the United States and so many other WIPO members was wrong and should not become the model that this organization adopts moving forward.

Moreover, WIPO allowed the new agreement to be pushed through and adopted, over the objections of multiple WIPO members, a new agreement that now includes geographical indications for a wide range of agricultural and non-agricultural products, without sufficient protections for users of common or generic names or for prior trademark holders around the world. Without adequate safeguards, companies in the United States and other countries will experience diminished sales opportunities and eroded intellectual property rights in countries that threaten to block their use of common food names on a world-wide basis or negatively impact existing protections for their established trademarks.

Many WIPO members rely on trademark protection and depend on continued generic use to create jobs and boost economic development. Because of the flawed process and outcome, we believe that the result of the Agreement cannot be viewed as a legitimate international agreement. In addition, those flaws throw into question the ability of WIPO to serve as a constructive forum to promote cooperation and harmonization of intellectual property protection regimes. To ameliorate this situation, WIPO must ensure that implementation of this Agreement, and technical assistance conducted pursuant to the Agreement, be done in a balanced way that adequately protects the interests of trademark owners and users of generic food names. Without such action, WIPO’s status as an organization that reflects the consensus of its members will remain severely damaged.

In addition, we are very concerned about the way in which the Agreement is being funded. It is our understanding that the existing Lisbon system runs at a chronic deficit, despite an obligation on Lisbon parties to make contributions to the system. Moreover, it is our understanding that fees collected from other registrations, such as the Madrid Agreement and the Patent Cooperation Treaty, finance this substantial deficit. The companies that rely on WIPO’s patent and trademark registration systems pay considerable fees to protect their own intellectual property, including trademarks. It is entirely inappropriate to expect these businesses to bear the burden of funding the costs of the Lisbon Agreement. We strongly object to subsidization of the Lisbon system by patent and trademark applicants.

As the WIPO Program and Budget Committee meets this week to discuss 2016-2017 program and budget items, we urge it to take affirmative steps to remedy this funding inconsistency without delay. WIPO should make the Lisbon mechanism transparent and provide for a full accounting of its funding sources. Further, WIPO should establish a process under which the cross-funding provided in prior years will be refunded in an appropriate manner.

As parties to this Agreement consider implementing its provisions, they should ensure they do not impose inappropriate barriers to trade. Restrictions on trade due to the inappropriate use of geographical indications are already proliferating in ways that negatively impact the trade opportunities of U.S. companies and the workers they employ. We are very concerned that parties to this Agreement will implement it in a manner inconsistent with existing international trade obligations, including under the World Trade Organization’s Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement).

Our faith in WIPO as an institution has been seriously undermined by WIPO’s departure from longstanding practice when it allowed a limited group of WIPO members to amend the Lisbon Agreement, without full participation of all WIPO members in a consensus fashion, and in a way that harms market access and the intellectual property rights of stakeholders from the United States and other WIPO member countries. We urge you to take appropriate steps to rectify the funding situation and to implement the Agreement in a fair and balanced way that adequately protects the interests of trademark owners and users of generic names. We will continue to monitor closely these developments and other areas of WIPO’s work to ensure that WIPO effectively functions as a global forum for the protection of intellectual property rights.

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