Indications géographiques, commerce des biens, ACP

1. PROTECTION DES INDICATIONS GÉOGRAPHIQUES ET COMMERCE DES BIENS: QUESTIONS LÉGALES CLÉS ET IMPLICATIONS POUR LES PAYS MEMBRES ACP AFRICAINS
Dr. Susan ISIKO ŠTRBA
IP Consultant
Susan.isikostrba@graduateinstitute.ch
Séminaire régional sur La protection des Indications géographiques (IG) dans les pays ACP, , Douala (Cameroon), 27 – 28 April 2010

2. STRUCTURE OF THE PRESENTATION
Overview of international legal framework for the protection of GIs
Key legal issues
Implications for African ACP countries

3. OVERVIEW OF THE INTERNATIONAL LEGAL FRAMEWORK FOR THE PROTECTION OF GIS

4. DEFINITIONS AND PURPOSE (ARTICLE 22.1 TRIPS)
Indications which identify a good as originating in the territory of a Member or a region or locality in that territory, where a given quality, reputation or other characteristics of the good are essentially attributable to its geographical origin
The Bangui Agreement defines GI in a way similar to TRIPS
Reflect marks, signs or place names used to identify the origin, reputation or other characteristics of products
Examples of products for which GIs are typically use: Wines, spirits, foodstuffs, handicrafts, industrial products

5. THE 1958 LISBON AGREEMENTS
Protects appellations of origin
Against any usurpation or imitation, even if the true origin or the product is indicated by terms like

6. THE 1891 MADRID AGREEMENT CONCERNING THE INTERNATIONAL REGISTRATION OF MARKS
International registration of marks

7. AGREEMENT ON TRADE-RELATED ASPECTS OF INTELLECTUAL PROPERTY RIGHTS (TRIPS)

8. MINIMUM STANDARD OF PROTECTION FOR ALL GIS (ARTICLE 22.2-4)
“interested parties” must have legal means to prevent any use which:
Misleads the public as to the geographical origin of the good
Constitutes an act of unfair competition according to article 10bis Paris Convention
Refusal or invalidation of registration of a trademark if use of the GI in the trademark would mislead the public as to origin

9. HIGHER LEVEL OF PROTECTION FOR GIS FOR WINES AND SPIRITS (ARTICLE 23)
Additional protection against use of a GI for wines on wines (and for spirits on spirits) not originating in the place indicated by the GI:
Without requirement to show misleading of the public or act of unfair competition;
Even where the true origin of the good is indicated, and
Even where the GI is accompanied by expressions e.g. kind, type, imitation
Against registration as a trademark with respect to wines and spirits not having the origin indicated

10. EXCEPTIONS TO PROTECTION OF GI (ARTICLE 24)
Generic terms (“customary”) (art. 24.6)
Prior trademark rights (art 24.5)
Certain other prior use (art. 24.4)
Personal names (article 24.8)
GIs not protected or used in their country or origin (art 24.9)

11. REGIONAL AND BILATERAL FRAMEWORKS
The Bangui Agreement (March 2, 1977)
Official recognition of GIs and appellation of origin within AOPI
Embodies national laws of Member States of OAPI
Not utilized in practice except one GI for Champagne
The Banjul Protocol on Marks (March 6, 1993)
Filing system for trademarks for Members of ARIPO

12. REGIONAL AND BILATERAL FRAMEWORKS
ACP-EC EPAs (Cotonou Agreement, Article 46)
Need to ensure adequate and effective level of protection for GIs in line with international standards
With a view to reducing distortions and impediments to bilateral trade
Protection considered in light of level of development (Article 46.3)
But EU enterprises would benefit from reciprocal and extended level of protection
Cooperation between parties in field of IP
Producers from third countries can register their GIs in the European Register (Council Regulation (EC) No. 510/2006)

13. KEY LEGAL ISSUES UNDER THE DOHA DEVELOPMENT AGENDA

14. MULTILATERAL REGISTER (ART. 23.4)
Mandate and objectives
In order to facilitate the protection of GIs for wines
Negotiations shall be undertaken in the Council for TRIPs
Concerning the establishment of a multilateral legal system of notification and registration of GIs for wines eligible for protection in those Members participating in the system
Various negotiation positions

15. EXTENSION OF THE HIGHER LEVEL OF PROTECTION TO PRODUCTS OTHER THAN WINES AND SPIRITS
What do proponents want?
Art. 23 to apply to all GIs
Art. 24 exceptions to apply mutatis mutandis
Multilateral register to be established shall be open to GIs for all product
Principal actors:
Proponents: include EC and certain ACP countries – Guinea, Jamaica, Kenya, Madagascar and Mauritius
Opponents: include the Dominican Republic (ACP)
Various issues are raised in relation to GI extension

16. THE EC “CLAW BACK” PROPOSAL IN AGRICULTURE
A list of names currently used by producers of agricultural products other than the right holders in the country of origin to be established so as to prohibit such use
The proposal intended to be complementary to the work on GIs in the context of TRIPS

17. IMPLICATIONS FOR AFRICAN ACP MEMBER STATES

18. POSSIBLE OPPORTUNITIES FOR PROTECTION OF GIS (1)
Enable products to be widely recognized and valued for their quality, which helps to
Secure premium prices for the products
Enable producers to protect themselves against fraudulent use of these geographical names in place. May in turn
Ensure greater returns to local producers
Encourage investment and invention

19. OPPORTUNITIES FOR PROTECTION OF GIS (2)
Encourage innovation while providing an enabling environment for the products be more widely recognised and valued for their quality
Promote trade and help a country’s products channel into foreign markets
Lead to increased rents from the GI which would promote development in other sectors like agriculture and industry.

20. CHALLENGES RELATED TO SETTING UP AND MAINTAINING A GI LEGAL FRAMEWORK (1)
GIs in their own are likely not to be sufficient to provide significant incentives for building markets
Necessary complements to establishment and maintenance of a GI framework
Appropriate legal framework
Availability of other forms of IPRs, in particular trademarks, trade secrets and design protection
Competition regulation
Standards

21. CHALLENGES RELATED TO SETTING UP AND MAINTAINING A GI LEGAL FRAMEWORK (2)
Appropriate institutional framework
Producers’ and manufacturers’ associations
Administrative and quality control agencies
Enforcement agencies
Technical and financial assistance
Establishment of the link between origin and product characteristics
Continuous marketing efforts
Continuous quality control

22. CHALLENGES RELATED TO SETTING UP AND MAINTAINING A GI LEGAL FRAMEWORK (3)
Other challenges and barriers (1)
Difficulty in Acquiring/identifying products that can find new markets at a fair price
Making available sufficient information and analysis of what amounts to GIs
Minimum use of GI registration in Africa (only Champagne in OAPI)
Lack of evidence on the benefits and/losses of increased protection for GIs in African ACP countries

23. CHALLENGES RELATED TO SETTING UP AND MAINTAINING A GI LEGAL FRAMEWORK (4)
Other challenges and barriers (2)
Imposing restrictions on local producers to renaming, labelling, remarketing and rebranding
Fragmentation of the market among developing countries and thus loss of competitiveness with respect to developed countries
Creation of competition among products of developing countries and thus loss of bargaining power with developed countries

24. CHALLENGES RELATED TO SETTING UP AND MAINTAINING A GI LEGAL FRAMEWORK (5)
Other challenges and barriers (3)
GIs do not guarantee access to foreign markets
Compliance with foreign sanitary requirements
Compliance with foreign GIs administrative systems
E.g., EU Regulation 510/2006 – national inspection structures required for marketing of all GI agricultural products within the EU

25. THINGS TO CONSIDER OR BE CAUTIOUS ABOUT (1)
Economic and social benefits (costs) of GIs protection in a given region are difficult to assess
Identifying the products which can benefit from GI protection and are tradable, both within the region and internationally, before elaborating standards for GI protection within the ACP or at national level.

26. THINGS TO CONSIDER OR BE CAUTIOUS ABOUT (2)
Developing empirical studies, based on country or sub-regional and product case studies, to help determine whether the advantages of protecting GIs outweigh the disadvantages and vice versa.
This should form the basis for the African ACP States in engaging in the Doha negotiations on the establishment of the multilateral register for wines and spirits and the proposed extension of protection to products other than wines and spirits under Article 23 of the TRIPs Agreement

27. THANK YOU
Dr. Susan ISIKO ŠTRBA
IP Consultant
Susan.isikostrba@graduateinstitute.ch