Workshop on Protection of Geographical Indications (GIs) in the African Member States of the ACP Group, 10-11 May 2010
On 10 and 11 May 2010, tralac attended a Regional Seminar on the Protection of Geographical Indications (GIs) in the African Member States of the African, Caribbean and Pacific (ACP) Group in Cape Town, South Africa. The seminar was prepared by the European Commission’s ACP-EU TradeCom Facility based in Brussels, whose objectives are to ‘promote sustainable development, to contribute to poverty eradication in the ACP countries through regional integration and to facilitate ACP countries’ smooth and gradual integration into the world economy’.
The seminar programme included speakers from a number of different institutions, including the World Intellectual Property Organization (WIPO), the African Regional Intellectual Property Organisation (ARIPO), the World Trade Organization (WTO) and the European Commission (EC), as well as a number of independent consultants and intellectual property (IP) experts.
The topics covered ranged from the international legal framework for protecting GIs and the economic rationale for doing so, to the way in which GI protection has been implemented in the European Union. An overarching theme of the seminar was how GIs could be used as a development tool for the ACP countries in Africa, and with this in mind a number of specific case studies were presented covering both the successful implementation of GI protection in certain developing countries, as well as the opportunities and challenges likely to be faced in the African context.
What are GIs?
GIs are names used for certain products produced according to traditional methods in a particular place. Famous examples of such products are Champagne and Roquefort cheese. In law a GI is an intellectual property right (IPR) mechanism, which identifies a product as originating in a specific country or region where a given quality, reputation or other characteristic of the good is essentially attributable to its place of origin. GIs are usually the geographical names of actual places, such as Bordeaux for wines, or Parma for ham and cheese, but they do not have to be. They can also be names that have become synonymous with production in a certain country or region, even if the name is not that of the country or region itself.
A good example of such a GI is ‘Feta’. For a name of a good to become a GI however, two conditions must obtain. Firstly the good must originate from a defined geographical area. Secondly, it must have characteristics derived from this source, be they a certain tangible quality, the use of a particular traditional production process or simply an excellent reputation.
Such goods are often renowned for their particular qualities, and consumers are therefore willing to pay a premium price for them. This creates an incentive for the reputation of these goods to be misappropriated by producers of goods which can be passed off as the genuine article through false or misleading naming and labelling. GIs serve to protect the producer of the genuine product from such unfair competition and to assure consumers that the product they are buying is what they expect it to be. Unlike a trade mark, however, a GI is a collective right. It can be used by any producer who complies with the specifications for obtaining the GI status, and is approved by the appropriate authority.
What is the international legal framework for GIs?
Protection of the use of names indicating the provenance of traditional goods has evolved in different ways under different national and international laws, but can be divided into three basic types: Indication of source (e.g. ‘Made in South Africa’), appellation of origin, which indicates that a good originates from a particular region from which its tangible qualities are derived and geographical indications, which go further than indications of source, but are not quite as stringent as appellations of origin (as GIs include products which derive their reputation from production in a specific country or region, even if they do not derive any tangible qualities from production in that country or region).
The 1883 Paris Convention on Intellectual Property represented the first international effort to adopt a common approach to intellectual property issues. It identified GIs as a distinct category of intellectual property, but did not clearly define the concept. The Paris Convention did, however, provide for remedies in respect of the unlawful use of indications of source on goods. The 1891 Madrid Agreement on indications of source went further, and provided specific rules for the repression of not only false, but also deceptive indications of source. A deceptive indication of source would occur when the true origin of a product is indicated, but in such a way that a purchaser is nevertheless misled as to the true origin and quality of the good.
The 1891 Madrid Agreement Concerning the International Registration of Marks is also important in terms of the protection of GIs, as in many countries GIs are only able to be protected as trademarks. Under this agreement, signatory states that do not have a specific sui generis GI law can use general trademark law as a substitute. The agreement also established an international registration system for trademarks. Registration of a trademark under this agreement protects its use in all signatory countries designated by the applicant. The 1958 Lisbon Agreement, meanwhile, aimed at the protection of appellations of origin. Under the agreement an appellation of origin is protected in all 25 signatory states if it is protected in its home country and registered in the International Register of WIPO.
The WTO Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) is the first multilateral agreement to deal specifically with GIs. The definition of GIs found in Article 22 of the agreement expands the concept of appellations of origin in the Lisbon Agreement to include the protection of goods which merely derive a reputation from their place of origin without deriving other more tangible characteristics. In addition, GIs do not have to be the names of the actual places where the product originates, but can instead be names that have come to be identified with a particular country or region. The definition of GIs covers agricultural goods and traditionally produced food, as well as industrial goods.
The TRIPS Agreement provides for two levels of protection of GIs. A minimum level of protection is extended to GIs covering all products. This obligates WTO Members to provide legal means for interested parties to prevent the use of a GI which misleads the public as to the geographical origin of the good, or which constitutes an act of unfair competition. A higher level of protection is extended to GIs relating to wines and spirits. This obligates Members to provide legal means for interested parties to prevent the use of a GI for wines and spirits not originating in the place indicated by the GI, without requiring them to show that the public is being misled, or that the use of the GI constitutes unfair competition. This covers instances when the true origin of the good is indicated or where the GI is accompanies by an expression such as ‘style’ or ‘imitation’.
The agenda for the current Doha Round of WTO trade negotiations includes two contentious issues relating to GIs. The first pertains to the extension of the higher level of protection to goods other than wines and spirits. This has been opposed by a number of WTO Members who argue that such a move would entail extra costs for many countries and could possibly become a form of protection used to block imports. The second issue pertains to the establishment of a multilateral register of wine and spirit GIs. A number of Members would like to see such a register having a legal effect (i.e. creating the presumption of eligibility for protection), while others wish it to be nothing more than a non-binding database aimed only at providing information.
Regional and national frameworks
GIs can also be protected within context of regional agreements. The EU, for instance, has a well developed system of GI protection under EC Council Regulation 510/2006. EU law limits GI protection to agricultural goods and foodstuffs where there is a clear link between product and origin. EU law also allows for the registration in the EU of GIs from third countries provided they are recognised in their country of origin. GI provisions are also included in EU trade agreements with other parties, such as the Trade and Development Cooperation Agreement (TDCA) with South Africa. This agreement prohibits South African use of the names ‘port’ and ‘sherry’ for exports to the EU, and includes provisions on the protection of GIs for wines and spirits.
The 1977 African Intellectual Property Organisation (OAPI) Agreement, known as the Bangui Agreement, recognises GIs and protects appellations of origin in its 16 member states. As yet no GIs have been formally registered by any of the 16 OAPI member states, who hail from French-speaking West and Central Africa, and are all party to the Paris Convention and TRIPS Agreement. ARIPO, meanwhile, was established in 1976 to consolidate the resources of its membership (currently 8 English-speaking African countries) in IP matters. The Banjul Protocol adopted in 1993 established a trademark filing system for ARIPO members, which since 1997 has been revised to be TRIPS compatible.
Most countries have a national legal framework for the protection of GIs, but specific instruments and levels of protection vary considerably. Two broad types of GI frameworks can be identified. The first is the adoption of laws relating specifically to GIs, which provide for either passive protection of GIs or protection through a system of registration. These laws often follow the scope provided by the TRIPS Agreement. Some countries do not have sui generis GI laws, however, and instead use legislation pertaining to trademarks to protect GIs. It is usually the case that in order to be protected, GIs must be registered in their country of origin.
Under Article 46(1) of the ACP-EU Economic Partnership Agreement (commonly known as the Cotonou Agreement) the parties recognised the need to ensure adequate and effective protection for GIs in line with international standards. The agreement also envisaged further cooperation between the parties on this issue. The inclusion of GIs and other intellectual property provisions under the Economic Partnership Agreements (EPAs) currently being negotiated between the EU and a number of African regional blocs has, however, proved a contentious issue, with many African countries signalling an unwillingness to discuss these issues.
While the EU, with a number of registered GIs, would stand to gain from the inclusion of GI protection under the EPAs, it is not so clear what benefits the African countries would get out of such a move, especially considering the fact that they can already register GIs for protection in the EU. Perhaps if the procedures for doing so were simplified or additional protection provided the benefits would be more apparent.
The role and benefits of GIs
At a basic level GIs serve to protect the name of a local specialty, the producers of the product and the consumers of the good. Through the adoption of GI protection, the name of the GI product is protected from misappropriation or other such misuse, the producers of the product are similarly protected from unfair competition both within and outside the supply chain and consumers of the product are protected in the sense that the GI provides them with guarantees as to the product’s origin, method of production and quality.
GIs can also be viewed as a tool for wider social and economic development, as they have the potential to bring about a number of further benefits. Firstly, GIs can serve to promote a country or region’s cultural heritage by facilitating the preservation of local know-how, skills and practices. Secondly, GIs provide significant marketing potential by ensuring that the strong image or reputation of a particular product is maintained. This can lead to increased demand and prices which in turn ensure additional value generation for producers and potentially lead to job creation.
Thirdly, GIs can play an important role in rural development by ensuring a significant portion of value added accrues to the producers situated in rural areas, and by creating employment opportunities in these areas, which in turn are likely to slow migration from rural to urban areas. GIs can also impact positively on biodiversity in rural areas through the preservation of local resources such as plant and animal breeds. In addition they can boost tourism in regions (both rural and urban) which become famous for a particular product.
While GIs have the potential to bring about these benefits and many others, such as enhancing the reputation of a country or region, encouraging export diversification and the exploration of niche markets and uplifting vulnerable communities or groups such as traditional societies or women, it is important to bear in mind that the use of GIs is not a panacea. In particular, these benefits are unlikely to accrue unless a GI strategy is coupled with effective marketing efforts to ensure that potential consumers of GI products are made aware of these products and their qualities.
African countries have historically been wary of including GIs and other intellectual property (IP) issues in multilateral or regional trade negotiations, but the development in recent years of external markets for specific products has led to an increase in the interest of African countries in using GIs as development tools. The potential for GI usage in Africa is significant, as external demand exists for a number of African products which have acquired reputations worth protecting, including Kenyan tea, coffee from Ethiopia, shea butter from Burkino Faso, traditional fabrics from Cote d’Ivoire, Madagascan vanilla and Rooibos from South Africa, among many others.
Many of the potential benefits listed above are especially relevant in the African context, and could result from the use of GIs for a number of African products. In particular, the use of GIs in Africa could potentially result in increased and diversified exports and a visible presence of African products on world markets, increased investment and development in sectors such as agriculture and traditional crafts, the preservation of traditional know-how and practices, higher earnings for local producers and poverty alleviation, especially in rural areas.
Importantly, GI protection is not incompatible with a move towards high volume agricultural or industrial exports. While consumer demand for traditional products in the developed world means that an effective GI strategy can help many African countries to differentiate and diversify their exports, thereby reducing their reliance on bulk exports of primary products, there is no reason why such a strategy cannot complement efforts to increase volumes of traditional exports.
Devising GI policy and regulating GIs
In order for an effective GI strategy to be adopted, a national GI policy framework needs to be in place. An increased interest in GIs has already led a number of African countries to implement domestic GI policies, while others are currently in the process of doing so. Historically GIs have been used as tools for the promotion of agricultural goods, and in many countries (and especially in Europe) GIs continue to be applied almost exclusively to agricultural products. Nevertheless, a number of legal texts have since placed GIs firmly in the IP domain, and many countries now incorporate GI arrangements into their intellectual property rights legislation, allowing agricultural and non-agricultural products to be covered by the same text. This is important in the African context, as a number of craft products produced throughout the continent may have the potential to benefit from GI status.
While many countries have enacted sui generis GI legislation, others incorporate GI rules into legislation covering labelling or trademarks. Some countries also share GI regulation between agricultural and IP legislation. Where this is the case, it is important that the linkages between the relevant institutions and government departments are optimised so as to avoid jurisdictional disputes. One way to address this issue, and to coordinate interaction between all relevant parties, is to create a cross-cutting national GI committee. Because GI regulation is complex and involves technical, agricultural and legal competencies, the GI committee can also serve the purposes of bringing together the necessary expertise and solving conflicts of interest.
It is very important that GI legislation be designed in such a way that the procedures for the recognition and registration of GIs do not become a deterrent to those who might be interested in seeking GI status. These procedures should ideally be practical, low-cost and easy to understand and follow. Furthermore, the existence of these procedures needs to be clearly communicated to potential applicants. One method to ensure that these conditions are met is to set up a simple online registration procedure which sets out clear specifications as a reference framework for obtaining GI status.
These specifications should include the name to be protected, the type of product, the group seeking GI recognition, the conditions of production, the definition of the geographical area, an explanation of the link between the product and the area and an identification of the authority that will be in charge of controls. The latter may be a public authority or a private certification body. These specifications identify the standards which enable fraud to be detected, and constitute a shared understanding of what should and should not count as a legitimate GI product.
Most importantly, if GIs are to be effective they must be accepted and understood by politicians and producers in order to facilitate legitimacy, they must provide a real benefit to society and stakeholders (authorities, producers, consumer associations, public or private audit bodies, academic institutions) must work together so that all relevant interests are taken into account.
Setting up an effective GI strategy
The creation of an effective GI strategy requires a number of steps. First, a suitable product must be identified. Then, relevant GI regulations must be sought, either in the form of trademark or specific GI legislation. Next, an effective product development and marketing strategy must be developed. This is important, as GI status alone will not automatically guarantee increased demand and penetration of external markets.
Producers must also organise themselves into a representative group (such as a producer association) with collective legal status. This group should then apply for GI status. This application would involve seeking recognition for the applicant group, exchanges with various institutions and stakeholders (including those opposed to the application), defining the specifications for the GI, taking into account the realities of production, and setting out the production and traceability controls for the GI. The latter should ideally be acceptable to foreign certification bodies and may need to be designed so as to be user-friendly for illiterate producers.
Once a GI application is successful and the GI in question is registered and recognised, the producer group should devote its energies to two tasks. Firstly, it must take the lead in the day-to-day management of the GI. This would involve, inter alia, monitoring the application of the relevant specifications and ensuring that all producers comply with the rules, setting up monitoring for the protection of the GI and communicating with other stakeholders such as those in local and national government. Secondly, the producer group must promote the GI, both in the sense of conducting market research and marketing the product, and in the sense of ensuring that the implications of GI status are understood by producers and consumers alike. Key to the success of a GI strategy is the differentiation of the product in question based on its quality and origin. Thus it is important that these aspects are communicated clearly to the customer through labelling or promotion. This will serve to build the reputation of the product and ensure consumer confidence in its quality.
Challenges for African countries
The use of GIs appears to have the potential to assist economic development in Africa, but effective GI policies and strategies face a number of challenges in the region. For instance, some African countries may not be willing to devote the funds and resources necessary for putting in place the legal and institutional frameworks for GI protection, organising and educating stakeholders, enforcing GI protection or setting up and administering control and traceability systems, unless they are convinced of the need for using GIs. This is where the importance of accurately identifying appropriate products and conducting cost-benefit analyses comes in.
Difficulties may also be encountered in convincing producers and other stakeholder of the benefits of using GIs. Many African producers are unlikely to be well informed about GIs and it is therefore important that they are informed of the potential costs and benefits and that they are made aware of the results of GI experimentation by producers in other countries and regions. Other potential challenges facing the use of GIs in Africa include opposition to restrictions being placed on producers with regard to production, naming and labelling, small scale producers being deterred by burdensome registration procedures or compliance rules, conflict arising through differing production practices and the possibility that some producers are excluded due to their geographical situation.
It must also be reemphasised that GIs are not a silver bullet. GI protection without effective marketing will not lead to increased sales and exports. Furthermore, there is little empirical evidence quantifying the benefits of using GIs. Nevertheless, GI protection, allied with effective marketing strategies, has been used to add value to a number of products originating in developing countries, and there is no reason why this could not happen in African countries as well. If this is the case, then GIs can certainly play a positive role in developing and diversifying African exports.
* This discussion was written by Sean Woolfrey, tralac Researcher
O’Connor, B. 2010. Origin and framework for the protection of geographical indications.
Aubard, A. 2010. The use of geographical indications to promote economic development: issues, opportunities, policy options.
Barjolle, D. 2010. Economic Rationale and Basic Policy Framework for Using GIs in Product Development and Promoting Competitiveness (papers commissioned by the ACP-EU TradeCom Facility in the context of the ACP regional workshops on Geographical Indications, April-May 2010).