Earlier this month, on the 3rd of November 2021, Ghana deposited its instrument of accession to the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications (Geneva Act of the Lisbon Agreement) of 2015. The Geneva Act will thus enter into force, with respect to Ghana, 3 months after its accession i.e. the 3rd of February 2022. This is a significant development and I will explain why this is so below.
The Geneva Act is an updated version of the earlier Lisbon Agreement on Appellations of Origin (Lisbon Agreement) which was adopted in 1958. Unlike the Lisbon Agreement which only deals with appellations of origin, the Geneva Act covers both appellations of origin and geographical indications. Regarding the difference between the two, WIPO helpfully points out in this FAQ that:
Appellations of origin are a special kind of geographical indication (GI). GIs and appellations of origin require a qualitative link between the product to which they refer and its place of origin. Both inform consumers about a product’s geographical origin and a quality or characteristic of the product linked to its place of origin. The basic difference between the two concepts is that the link with the place of origin must be stronger in the case of an appellation of origin. The quality or characteristics of a product protected as an appellation of origin must result exclusively or essentially from its geographical origin. This generally means that the raw materials should be sourced in the place of origin and that the processing of the product should also take place there. In the case of GIs, a single criterion attributable to geographical origin is sufficient – be it a quality or other characteristic of the product – or even just its reputation.
Both the earlier Lisbon Agreement and the latter Geneva Act now constitute the Lisbon system for the international registration of appellations of origin and geographical indications.
So, why is Ghana’s accession to the Geneva Act such a significant development? To the best of my knowledge, Ghana is the second common law country to accede to the Lisbon system. Prior to Ghana’s accession, only one other common law country, i.e. Samoa, was a party to the Geneva Act. [I have excluded Israel from this list as it is a ‘mixed jurisdiction‘]. The reason behind the reluctance of common law countries to join the Lisbon system is not far-fetched. Most common law countries prefer to protect geographical indications via trademark laws, especially through certification and collective marks. Accession to the Lisbon system however requires a country to adopt a sui generis law to protect geographical indications.
Moreover, it is noteworthy that the level of protection for geographical indications under the Lisbon system is higher than what is required of WTO members with regard to the protection of geographical indications under the TRIPS Agreement. Crucially, while the TRIPS Agreement only requires a higher level of protection for wines and spirits, the higher level of protection in the Geneva Act is applicable to all products. Also, the Lisbon system prohibits the payment of renewal or maintenance fees which is typically required under most trademark laws. Then there is the issue of generic-ness which is, essentially, prohibited under the Lisbon system as long as the appellation of origin or geographical indication is still protected in its country of origin. In essence, while the use of trademark law to protect geographical indications may suffice in terms of compliance with the TRIPS Agreement, it will not suffice for accession to the Lisbon system.
Shortly after the adoption of the Geneva Act in 2015, Professor Gervais had bemoaned the fact that members of the Lisbon Union had failed to use the opportunity of the negotiations on the Geneva Act to bridge the gap between members of the Union and common law countries. Interestingly, while a number of common law countries such as India, Malaysia, and Singapore already have sui generis laws to protect geographical indications, none of them have joined the Lisbon system. Ghana adopted its own sui generis laws on geographical indications in 2003 (i.e. the Geographical Indications Act of 2003) and it has now joined the Lisbon system. Will other common law countries follow Ghana’s footsteps by joining the Lisbon system?
*I have updated this post to note that Ghana is the second common law country after Samoa to join the Lisbon System.