Extending the Protection of Geographical Indications

Case Studies of Agricultural Products in Africa

Michael Blakeney, Thierry Coulet, Getachew Alemu Mengistie, Marcelin Tonye Mahop, Michael Blakeney, Thierry Coulet, Getachew Alemu Mengistie, Marcelin Tonye Mahop

• Publisher: Routledge
• Year: 2013
• ISBN:
  9781136478789
• Edition: 1
• Topic: Derecho
• Subtopic: Derecho agrario

The TRIPS Agreement (for trade-related intellectual property rights) provides for the general protection of geographical indications (GIs) of product origin, including for example the special protection of wines and spirits and for the creation of a multilateral register for wines. The African Group of countries has been in the forefront of countries agitating in the World Trade Organization TRIPS Council for the extension of this special protection and of the multilateral register to industries which are of interest to developing countries, primarily agriculture. The so-called "extension question" is the central feature of the Doha Development Agenda at both the WTO and World Intellectual Property Organization. This book provides some empirical evidence and applied legal and economic reasoning to this debate. It provides both a general review of the key issues and a series of case studies from six Anglophone and four Francophone countries in Africa. These focus on major agricultural commodities such as coffee, cotton, cocoa and tea, as well as more specific and local products such as Argan oil and Oku white honey.

Part I

The Policy Context

1

GEOGRAPHICAL INDICATIONS AND TRIPS

Michael Blakeney

Introduction

Article 22 of the TRIPS Agreement requires that WTO members ‘shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention (1967).’ It would be convenient to hypothesise that the origins of the precursor European legislation that sought to protect the commercial reputation of traders in discrete geographical localities was actuated by a concern to protect consumers from false and misleading geographical indications (GIs). However, the origin of GIs legislation can be traced back to French statutes to protect the competitive advantage of wine producers (see Richard 1918, referred to in van Caenegem 2003). The mediaeval legislation of Bordeaux conferred two privileges upon the wine producers of south-west France. First, the privilège de la descente prohibited the transportation by river through Bordeaux of wines produced outside the region until 11 November of each year. With the icing up of rivers consequential upon the onset of winter, this gave the local wines a competitive advantage in gaining access to the lucrative Northern Europe markets. The justification for this restriction was stated to be to provide an opportunity for the authentication of the wines of the region. As will be seen below, a similar duality exists in relation to the modern justification of geographical indications laws in which a concern with the authentication of the origin of products cohabits with a concern to preserve the competitive advantage of local producers.

The second category of privilege was the privilege de la barrique, which restricted for use only for the wines of Bordeaux a barrel (barrique) of prescribed dimensions, which meant that wines from the region were better packaged and travelled cheaper than wines from competing regions. By a statute of 1764 seeking to prevent the illicit use of the Bordeaux barrique, each had to be branded with the name and parish of origin of the wine grower.¹ The barrique brand can be seen as a precursor of the registered GI.

In seeking to resist the abolition of its commercial privileges at the time of the French Revolution, Bordeaux raised a number of the arguments that have characterized the modern debate on geographical indications. First, it argued that the privileges were essential for guaranteeing the authenticity of the crus (vintages) and, second, that as the land of the region was not suitable for other agricultural pursuits, viticulture had to be protected through the maintenance of these privileges.

Interestingly, echoes of the ancient privileges enjoyed by the French wine industry can be seen in Article 23 of the TRIPS Agreement. This provides in Article 23.1 for ‘the additional protection for geographical indications for wines and spirits’ through the prohibition of ‘expressions such as “kind”, “type”, “style”, “imitation” or the like’ for wines and spirits not originating in the place indicated by the GI. Article 23.4 provides that 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 system of notification and registration of geographical indications for wines eligible for protection in those Members participating in the system’. This book addresses the question of whether the additional protection for wines and spirits envisaged in Article 23 of TRIPS might be extended to other products. This extension debate has been occurring in the context of discussions concerning the establishment of the multilateral system of notification and registration, as well as within the negotiations envisaged within Article 24.1 of TRIPS that are ‘aimed at increasing the protection of individual geographical indications under Article 23’.

Definitions

Geographical indications

Because of the diverse ways in which the protection of geographical indications has evolved under national laws, there is no generally accepted terminology. The following are the conventional definitions which can be found in the literature on geographical indications:

‘Indication of Source’ refers to a sign that indicates that a product originates in a specific geographical region.

‘Appellation of Origin’ refers to a sign that indicates that a product originates in a specific geographic region only when the characteristic qualities of the product are due to the geographical environment, including natural and human factors.

‘Geographical Indication’ includes both of the above concepts.

For the purposes of the discussions of reform proposals in April 2001 by the TRIPS Council, the WTO Secretariat adopted the term ‘indications of geographical origin’ to designate the different expressions used by WTO members to protect geographical origin of products (WTO 2001).

Trademarks

In general terms, trademarks are signs, which are used in order to distinguish the goods or services of one undertaking from the goods or services of another undertaking. In the TRIPS Agreement, Article 15.1 states: ‘Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of another undertakings, shall be capable of constituting a trademark.’ It follows from that definition that the main function of a trademark is to distinguish the goods and/or services for which the trademark is used. Only trademarks that are distinctive can perform that function.

The TRIPS Agreement does not give any indication under what circumstances a sign has to be considered distinctive in respect of certain goods or services. However, it is commonly accepted that, in order to be considered distinctive, signs used as trademarks must not be descriptive or deceptive.

As a general proposition, geographical indications are unlikely to be considered more than descriptive. Indeed, many trademark laws both explicitly disqualify geographic marks from protection as inherently distinctive marks and provide as a defence to trademark infringement, the fact that a mark identifies a geographic area which could be understood to constitute a reference to the origin of the relevant goods. However, it may be possible to use a geographical term as trademark in cases where that trademark, despite being originally descriptive, has acquired distinctive character (or secondary meaning) through use.

Differences between geographical indications and trademarks

As is indicated by the discussion above, a geographical indication is a generic description that is applicable to by all traders in a particular geographic location to goods which emanate from that location. A trademark is a sign which distinguishes the products of a specific trader from those of its competitors. Thus it is not likely to be descriptive and it cannot be generic. The right to protect a geographical indication from wrongful appropriation is enjoyed by all traders from the particular geographical location, whereas a trademark is protected from wrongful appropriation at the suit of the registered proprietor of that mark. Generally, geographic indications are monitored and protected by producer associations from the relevant region. Unlike trademarks, geographical indications are not freely transferrable from one owner to another, as a user must have the appropriate association with the geographical region and must comply with the production practices of that region.

International protection of geographical indications

Paris Convention for the Protection of Industrial Property, 1883

The first multilateral agreement, which included ‘indications of source or appellations of origin’ as objects for protection by national industrial property laws, was the Paris Convention. Under Article 10(1), provision is made for seizure upon importation of goods bearing false indications of the source of goods or the identity of the producer. Under Article 10(2), any

producer, manufacturer, or merchant whether a natural person or legal entity, engaged in the production or manufacture of or trade in such goods and established either in the locality falsely indicated as the source, or in the region where such locality is situated, or in the country falsely indicated, or in the country where the false indication of source is used, shall in any case be deemed an interested party.

Article 10bis also afforded protection against false or misleading indications of source as a means of repressing unfair competition. Included under the definition of unfair competition are any acts that create confusion, or allegations, the use of which in the course of trade are liable to mislead the public, as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity, of goods.

Madrid Agreement for the Repression of False or Deceptive Indications of Source of Goods, 1891

The original form of the Paris Convention prohibited the use of false geographical indications. A number of signatory nations proposed a more comprehensive form of regulation for what was considered to be a significant intellectual property abuse. The 1891 Madrid Agreement concerning the protection of geographical indications was their response. Article 1 provided that all goods ‘bearing a false or misleading indication’ to a signatory country, or to a place in that country ‘shall be seized on importation’. However, this agreement failed to attract the accession of significant trading nations such as the USA, Germany and Italy. A threshold problem with this agreement and with subsequent revisions was the inability of nations to exempt geographical indications which had become generic within their borders.

International Convention on the Use of Appellations of Origin and Denominations of Cheeses (‘Stresa Convention’), 1951

The parties to the Stresa Convention, which are some of the cheese-producing countries of Europe,² ‘pledge themselves to prohibit and repress within their respective territorial confines the use, in the language of the state or in a foreign language, of the “appellations d'origine”, denominations and designations of cheeses contrary to the principles stated in Articles 2–9 inclusive’. The Convention, which entered into force on 1 September 1953, applies to all specifications which constitute false information as to the origin, variety, nature or specific qualities of cheeses, which are stated on products that might be confused with cheese. The term ‘cheese’, according to Article 2.1 of the Convention, is reserved for ‘fresh and matured products obtained by draining after the coagulation of milk, cream, skimmed or partially skimmed milk or a combination of these’, or by ‘products obtained by the partial concentration of whey, or of buttermilk, but excluding the addition of any fatty matter to milk’.

Article 3 provides that the appellations of origin of those cheeses ‘manufactured or matured in traditional regions, by virtue of local, loyal and uninterrupted usages’ which are listed in Annex A are exclusively reserved to those cheeses, ‘whether they are used alone or accompanied by a qualifying or even corrective term such as “type”, “kind”, “imitation” or other term’. Annex A lists: Gorgonzola, Parmigiana Romano, Pecorino Romano and Roquefort. Annex B lists a number of designations for cheese, which are prohibited by Article 4.2 for products that do not meet the requirements provided by contracting parties in relation to ‘shape, weight, size, type and colour of the rind and curd, as well as the fat content of the cheese’. Listed in Annex B are Asiago, Camembert, Cambozola, Danablu, Edam, Emmental, Esrom, Fiore Sardo, Fontina, Gruyère, Pinnzgauer Berkäse, Samsöe, and Svecia.

The Stresa Convention came into force prior to the EEC Treaty and its regime providing for the free movement of goods. In the Deserbais case³, the ECJ held that the EEC Treaty did not affect the duty of a Member State to respect the rights of non-member countries under the prior agreement. Similarly, in the Cambozola case⁴ the ECJ ruled that the free movement of goods principle was subordinated to the Stresa Convention and Council Regulation (EEC) No 2081/92 permitting the registration and enforcement of rights in relation to designations of origin.

Lisbon Agreement for the Protection of Appellations of Origin and their Registration, 1958

The Lisbon Agreement established an international sy...