Dar es Salaam, Tanzania 22-26TH AUGUST, 2011

“Collective Marketing:  Adding Value through Geographical Indications,

Certification Marks and Collective Marks”

Mboya Rose

PRESENTATION OUTLINE

• Brief introduction to trademarks

• Certification marks and collective marks

• Geographical indications and their economic significance

• The Case of Developing Countries

• Enforcement of GIs

objectives

• The participants should be able to differentiate between trademarks, collective marks, certification marks and Geographical indications

• Importance of the above on economic development

• Differentiate between GIs, Indication of source and appellation of origin

• International Treaties for the protection of above• Identify local certification and collective marks• Identify some of the products that can be

protected as GIs in your country

• What is a Trademark? –is a distinctive sign, used by a

merchant to identify its goods or services and to distinguish them from those produced or provided by others.

1. Introduction to Trade Marks1. Introduction to Trade Marks

• To the producers:– Enables companies to differentiate their products – Is a marketing tool and the basis for building brand

image and reputation – Encourage companies to invest in maintaining product

quality– a valuable business asset – May be licensed to provide a direct source of revenue

through royalties– is a critical element in franchising agreements– Can be use as collateral for obtaining financing

II. The Role of Trademarks in Economic Development

II. The Role of Trademarks in Economic Development

Functions of Trademarks

Functions of Trademarks

• To the Consumers:– Ensure that consumers can identify the origin of

products– Aid consumers in distinguishing between products from

different manufacturers– Acts as an indication of quality – Acts as an assurance of genuineness – Source of information

– The Number and Quality of Billboards a long the road is a reflection of the level of commercial activity in the country

Words

“Yes” is a registered mark of Kencell Communications Limited.

“JOGOO” is a registered mark of Unga Limited

Device

The device is a registered mark of Nation Media Group.

The wind mill device is a registered mark of Unga Limited

Combinations

Of letters with devices

Courtesy: Eastman Kodak Company

“KCB” is a registered mark of Kenya Commercial Bank

Three-dimensional marks:

The contour device of a bottle is a registered mark of Coca Cola Company

Slogan

“the pride of Africa” is a mark of Kenya Airways.

MY COUNTRY MY BEER

“MY COUNTRY MY BEER” is a mark of East Africa Breweries Limited.

Numerals

“0722” is a registered mark of Safaricom limited

504“504” is a mark of Automobiles

Peugeot of France

iii) Term of protection

• In Tanzania, first registration seven (7) years.• Registration can be indefinitely renewed for

further ten (10) years after expiry of original registration or of the last renewal of registration.

• In Zanzibar, first registration fourteen (14) years.• renewed indefinitely for further fourteen (14)

years after expiry of original registration or of the last renewal of registration.

• .

2. Collective Marks and Certification Marks

A) Collective marks are marks used to distinguish products or services provided by a group of enterprises, generally members of an association.

• Collective marks are often used to show membership in such an association, union or organization

(e.g. UAW for United Auto Workers).

Collective MarksCollective Marks• Collective mark -owned by an association or

cooperative • The association establishes set criteria e.g.

quality standards• Permit individual enterprises who are members

of the Association and who comply to use • Members use the collective mark to market

their products domestically and occasionally internationally,

• Allows the member SMEs to benefit from a reputation acquired.

• The use of a collective mark may foster an alliance or facilitate cooperation with other SMEs so as to take full advantage of common resources.

ii) Difference between collective marks and individual marks

• Collective marks is allowed to be used in relation to products of different enterprises which are members of an association, and all of which produce or provide the same or very similar products,

• whereas an individual trademark is used for a product or service provided by just one enterprise

iii) Why are collective marks relevant for collective marketing

a) It is not always easy for individual enterprises to gain consumer recognition and loyalty.

b) Gaining access to retail stores, local markets and distribution networks and making their products known among consumers require a significant investment that may exceed an individual enterprises capacity

c) A collective mark denotes the common origin of the products and services from those individual producers or enterprises who use it.

d) Important for bulk orders that an individual cannot supply

iv) Relevance of collective marks to collective marketing

d) Collective marks are often used to show membership in union, organization.

e) Because the owners of a collective marks is responsible for ensuring compliance with certain standards by its members, the function of the collective mark is also to inform the public about certain features of the product which collective mark signifies

f) Collective marks are often used to promote products that are characteristic of a given region. Use of a collective mark helps to market such products domestically and occasionally internationally, but also provides a framework for co-operation between local producers

v) Who can apply

• An association of producers which will authorize its members to use the collective mark in relation to certain products or services

• Collective marks are protected through registration

• The costs, duration and scope of protection are similar to those of an ordinary trademarks.

• Since the cost gets distributed over the entire membership of the association, it becomes much cheaper for an individual member.

• Collective marks cannot be licensed

B)B) Certification MarksCertification Marks

• Are given for compliance with defined standards, but are not confined to any membership. They may be used by anyone who can certify that the products involved meet certain established standards.

• The label used as a certification mark will be evidence that the company's products meet the specific standards required for the use of the certification mark.

• Tanzania Bureau of Standards (tbs)• ISO compliance

Certification Marks

• The Woolmark symbol is the registered trade (certification) mark of the Woolmark Company.

• The woolmark is a quality assurance symbol denoting that the products on which it is applied, are made from 100% new wool and comply with strict performance specifications set down by the Woolmark Company. It is registered in over 140 countries and licensed to manufacturers who are able to meet quality standards in 67 countries

iii) Use of certification mark together with individual mark

• Certification mark and individual mark can be used concurrently

• The label used as a certification mark will be evidence that the product meets the prescribed quality and standards

3. Geographical Indications cont

• Sign used on goods that have a specific geographical origin and/or possess qualities or a reputation that are due to that place or origin.

• Interrelation between product and origin

Examples• Champagne for sparkling wine (France)• Bordeaux for wines (France)• Tequila for alcohol (Mexico)

GIs cont..

• The term is intended to be used in its widest possible meaning.

• It embraces all existing means of protection of such names and symbols (Eiffel towers), regardless of whether they indicate that the qualities of a given product are due to its geographical origin (appellation of origin) or they merely indicate the place of origin of a product (indication of source)

ii) Appellation of Origin

• An appellation of origin is a special kind of geographical indication.

• It generally consists of a geographical name or a traditional designation used on products which have a specific quality or characteristics that are essentially due to the geographical environment in which they are produced. 

iii) Indication of Source

• Any expression or sign used to indicate that a product or service originates in a country, a region or specific place.

• Indication of source on a given product is merely subject to the conditions that this product originates from the place designated by the indication of source. e.g Made in Kenya

• In its general use, it has become rather a designation for those indications of source which are not considered to be appellation of origin.

Appellation of Origin cont..

• The use of appellation of origin requires a quality link between the product and its area of production. This qualitative link consists of certain characteristics of the product which are exclusively or essentially attributable to its geographical origin such as climate, soil or traditional methods of production

• The concept of a geographical indication encompasses appellations of origin.

Examples of GIs cont..• Example 1: Tequila (Mexico)• Tequila, a Mexican drink, has acquired a distinct

identity.• Means of Protection as GI

Through a presidential decree in 1977, and is only produced Five Mexican states that have exclusive right to produce the beverage.

In 1978, tequila registered under the Lisbon Agreement and established its international status.

The Mutual Recognition Agreement signed between Mexico and the European Union for the reciprocal recognition of GIs in 1998.

Tequila

• Protection –Its producers to market it worldwide• No other product made with alternative

ingredients could be marketed as Tequila.• Over 190 million liters of tequila sold annually• because producers were able to guarantee the

quality of the product and they could avoid the name being misused.

• Example 2. Swiss for watches Quality commonly associated with Switzerland range from the precision and reliability of its craftsmanship, to the purity and health-giving properties of its Alpine environment.

Examples of GIs Cont

• Example 3. “Tuscany” for olive oil produced in a specific area of Italy (protected, for example, in Italy by Law No. 169 of February 5, 1992),

• Example 4“Roquefort” for cheese produced

in France (protected, for example, in the European Union under Regulation (EC) No. 2081/92 and in the United States under US Certification Registration Mark No. 571.798).

iv) Difference between GIs and Trademark

a) A trademark is a sign used by an enterprise to distinguish its goods and services from those of other enterprises. It gives its owner the right to exclude others from using the trademark. A trademark will often consist of a fanciful or arbitrary name or device.

a) A geographical indication tells consumers that a product is produced in a certain place and has certain characteristics that are due to that place of production.

Difference between GIs and Trademark cont..

c) It may be used by all producers who make their products in the place designated by a geographical indication and whose products share specified qualities.

d) Unlike a trademark, the name used as a geographical indication will usually be predetermined by the name of the place of production.

iv) Legal frameworks for Protection of GIs

International Treaties administered by WIPO

Trade Related Aspects of Intellectual Property Right (TRIPS)  Agreement, They are also covered under Articles 22 to 24

National lawsOther relevant methods

a) Treaties administered by WIPO

International Treaties administered by WIPO• Paris Convention Article 1(2) deals specifically

with indications of source or appellation of origin in the list of objects of industrial property. Others include Articles 9 (provides for the sanctions for false indications of source) and 10 (protection of indications of source)

• Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods

• Lisbon Agreement for the protection of Appellation of Origin and their international registration

Conditions of Article 1(2)

Appellation of origin must be recognized and protected as such in the country of origin.

(each appellation must benefit from a distinct and express protection, deriving from a specific official act- a legislative or administrative provision, or a judicial decision, or a registration)

such an official act is required because the specific elements of the object of protection (the geographical area, the lawful users and the nature of the product)

The appellation of origin must be registered with the International Bureau of WIPO

b) Bilateral Agreements

• Bilateral agreements between two states for the protection of their GIs

• List of GIs prepared by contracting states

• The agreement specifies type of protection that is granted

• Disadvantages

• Requires multiplicity of negotiations and thus inevitable diversity of standards

c) National laws for Protection of GI

i. Special laws for the protection of geographical indications or appellations of origin

ii. trademark laws in the form of collective marks or certification marks

iii. laws against unfair competition (Any Act of competition which are contrary to honest practices)

iv. consumer protection laws, or v. specific laws or decrees that recognize

individual geographical indications.

v) Term of protection

Protection is unlimited in timeProtection cannot become genericThere is no renewal of registration requiredFees paid onceApplication lodged by the member country and

not individual

vi) Economic Significance of GIs

• Initial calls for protection were by the wine producing countries

• The basic economic function of trademarks and geographical indications is to protect the goodwill of products to which they relate

• Developing countries show an increasing interest in gaining market access for their products by using geographical indications such as Basmati Rice, Jasmin Rice, or the like.

Economic significance of GIs cont..• In Europe, a number of patterns have emerged

in connection with the use of geographical indications.

• First, legal certainty due to the registration system has led to an increased investment and marketing of GIs

• This has resulted in markedly increased exports, particularly into other countries.

• Quality controls that are necessary under the European Regulation have helped customer confidence and quality in the products as such.

• Beyond the European region, developing geographical indications it seems will take time.

Economic Significance of GIs

• Since Geographical indications still attach most importance to wines and spirits.

• The use of geographical indications may also offer promising perspectives for marketing and sale of herbal medicine or cosmetics originating in tropical or semi-tropical countries.

vi) Licensing of GIs• GIs by their very nature cannot be subject

matter of licensing. • Technology and know-how for producing

Champagne or Cognac may be, in principle, transferred to a person producing sparkling wine or brandy outside the region of Champagne or Cognac,

• but the right to label the licensed product to be champagne or cognac of course cannot be transferred as well. This is the reason why in reality such a license is very unlikely.

• However, the point here is that even if such a transaction takes place, it cannot comprise the license for use of licensor’s geographical indication.

Licensing of GIs..• On the other hand, a person entitled to use a

geographical indication obviously does not need a license for it even if such a person obtains the know-how from another person in the region also entitled to use of the same geographical indication.

• The economic function of GIs is much the same as that of trademarks. First, there exist related goodwill.

• Second, they establish and protect market identity, by distinguishing the goods bearing a GI from same or similar goods of a different geographical origin, though this distinctiveness is on a collective rather than on individual level.

4. The Case of Developing Countries

• The vast majority of products that are eligible for GIs are agricultural products, foodstuffs, wines and spirits.

• It goes almost without saying that developing countries and also countries in transition are the major geographical source.

Examples of products that could be sold as geographical indications

• for most of such products which are sold worldwide – cloves, coffee, tea, cacao, rice, bananas, coconuts, mango, papaya, tapioca, spices, flowers, alcoholic and nonalcoholic local drinks….

• However, protection of geographical indications has been seldom applied to the extent available in many of those countries.

• By implication, economic benefits possibly gained on this basis have not been realized, or at least not to the appropriate extent.

Need for GIs in Africa: The Case of Ethiopian Coffee

• Well known brands of Ethiopian gourmet coffee• Yirgachefe• Sidamo All are place names• Harar

• Starbucks and others have been marketing at premium price using these names. Considered the finest quality coffee, attributable to the ecological conditions of these places. (therefore, qualifying for Geographical Indications under TRIPS.)

The Case of Ethiopian Coffee

• Studies show retail price to average $26 a pound, while the amount trickling to the country from each pound is max. of a mere $1. (around 60 cents).

• Despite coffee being the second most traded commodity (next to oil) farmers all over the world esp. in Africa have been suffering. One of the worst hit: Ethiopian coffee growers (some 11 million of them).

Jaffee Oranges from Israel

• After all, Israel only joined the Lisbon Agreement for the Protection of Appellations of Origin in order to have its famous Jaffee oranges protected.

• Tanzania and Zanzibar Products that can be considered for protection as GIs include cloves and sisal respectively mainland just to mention a few

5. Enforcement of GIs

• In essence, unauthorized parties may not use a geographical indication in respect of products that do not originate in the place designated by that indication.

• Applicable sanctions range from court injunctions preventing the unauthorized use to the payment of damages and fines or, in serious cases, imprisonment.

Exercise

• Identify products that can be protected as GIs in the country

• Identify products that can utilize collective marks as marketing strategies

• Identify some certification marks in your country

THANK YOU

FOR YOUR ATTENTION