geographical indications trade in goods key legal issues_implications for african acp countries
TRANSCRIPT
GEOGRAPHICAL INDICATIONS
AND TRADE IN GOODS: KEY LEGAL
ISSUES AND IMPLICATIONS FOR
AFRICAN ACP MEMBER STATES
Dr. Susan ISIKO ŠTRBA
IP Consultant
TradeCom Worskhop, Cape Town (South Africa), 10 – 11
May 2010
Structure of the presentation
Overview of the legal framework for the
protection of GIs
Key legal issues
Implications for African ACP countries
Overview of the LEGAL framework for
the protection of GIs
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
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)
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
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
Regional and bilateral framework (2)
The Banjul Protocol on Marks (November 19, 1993
as amended)
Filing system for trademarks for Members of ARIPO
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)
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)
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)
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))
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
Key Legal issues
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?
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?
Key legal issues (3)
Whether signing of EPAs will automatically provide additional
protection
EPAs simply procedures for EU recognition of GIs form ACP
countries?
Implications for African ACP
member States
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
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.
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
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
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
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
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
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.
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.
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
