Geographical Indications, Africa, Caribbean and Pacific group of Nations, trade in goods, key legal issues, competition, agricultural products, market access, crafts, wines and spirits

1. GEOGRAPHICAL INDICATIONS AND TRADE IN GOODS: KEY LEGAL ISSUES AND IMPLICATIONS FOR AFRICAN ACP MEMBER STATES
Dr. Susan ISIKO ŠTRBA
IP Consultant
Susan.isikostrba@graduateinstitute.ch
TradeCom Worskhop, Cape Town (South Africa), 10 – 11 May 2010

2. Structure of the presentation
Overview of the legal framework for the protection of GIs
Key legal issues
Implications for African ACP countries

3. Overview of the 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

5. Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) (1)
First multilateral instrument dealing with GI as such
Two levels of protection:
Minimum level of protection 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 (article 22 TRIPS)

6. TRIPS (2) - levels of protection
Additional protection against use of a GI for wines and spirits :
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

7. Regional and bilateral framework (1)
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

8. Regional and bilateral framework (2)
The Banjul Protocol on Marks (November 19, 1993 as amended)
Filing system for trademarks for Members of ARIPO

9. Regional and bilateral framework (3)
ACP-EC EPA (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)

10. Regional and bilateral framework (4)
EC-ACP EPA (2)
But EU enterprises would benefit from reciprocal and extended level of protection
Cooperation between parties in field of IP - upon request and mutually agreed terms and conditions
Producers from third countries can register their GIs in the European Register (Council Regulation (EC) No. 510/2006)

11. National laws (1)
 The Indications of Goods (Regulations and Protection) Act 1992, India
“Goods” – agricultural, natural or manufactured goods, goods of handicraft or industry including food stuff (section 2)
Higher level of protection for notified goods other than wines and spirits as may be decided by the government (section 25)

12. National laws (2)
 The Geographical Indications Act 2002, of Mauritius
“product” – natural or agricultural product, or product of handicraft or industry (section 2)
Claim in damages under the Protection Against Unfair Practices (Industrial Property Rights) Act 2002
No protection for indication that is contrary to public order or morality (section 6(b))

13. National laws (3)
The Geographical Indications Bill 2007, of Kenya
No protection when contrary to public order or morality
The Geographical Indications Bill 2008, of Uganda
Separate Registrar and a register to be established to receive applications as well as maintain the GI records

14. Key Legal issues

15. Key Legal Issues (1)
Multilateral system of notification and registration for wines and spirits
Are African ACP states in position to bear the costs of setting up and administering the proposed system?

16. Key legal issues (2)
Extension of higher level of protection to products other than wines and spirits.
guarantee that products suggests by African ACP countries as meriting GI protection will be accepted?
Guarantee that will be able to market the products?

17. Key legal issues (3)
Whether signing of EPAs will automatically provide additional protection
 EPAs simply procedures for EU recognition of GIs form ACP countries?

18. Implications for African ACP member States

19. 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

20. 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.

21. 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

22. Challenges (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

23. Challenges (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
Lack of evidence on the benefits and/losses of increased protection for GIs in African ACP countries

24. Challenges (4)
Other challenges and barriers (2)
Imposing restrictions on local producers to renaming, labelling, remarketing and rebranding
GIs do not guarantee access to foreign markets

25. Challenges (5)
Other challenges and barriers (3)
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

26. Things to consider or be cautious about (1)
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.

27. 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.

28. Things to consider or be cautious about (3)
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
LDC African ACP states could explore best ways of protecting GIs while protecting public interest

29. Thank You
Dr. Susan ISIKO ŠTRBA
IP Consultant
Susan.isikostrba@graduateinstitute.ch