GIS AS A TOOL FOR DEVELOPMENT:

ITS SPECIAL NATURE AND CHARACTERISTICS

P R O F E S S O R R U T H O K E D I J I

N O V E M B E R 1 0 , 2 0 1 1

Creating Value through Geographical Labeling

and Indications: The Power of Origin

GEOGRAPHICAL INDICATIONS

WHAT ARE THEY?

GEOGRAPHICAL INDICATIONS

• Indicators of Quality, Reputation, Characteristics

“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 characteristic of the good is essentially attributable to its origin”

- TRIPS

• GIs are a way for producers to indicate the geographic origin of their

product; they convey to the consumer particular features of quality and reputation and are a unique way to protect niche products particularly in agricultural trade.

AGRICULTURAL TRADE

AGRICULTURAL EXPORTERS

AGRICULTURAL TRADE IN AFRICA

12.4 Million people in Horn of Africa require humanitarian

assistance for food shortages

Currently only 20% of Africa’s GDP

Main source of income for 90% of rural population

Agri-business could make Africa a food exporter in

addition to covering shortages

Of the top 20 top agricultural and food commodity

importers, 60% are from Africa.

Sub-Saharan Africa has 12% of world’s arable land,

share of exports has shrunk from 10% to 2% in four

decades.

POLICY TOOLS FOR IMPROVING AGRICULTURAL

PRODUCTIVITY AND ENHANCING MARKET SHARE

DIFFERENT REGIMES

• Several legal regimes have the potential to be powerful tools for agricultural products. Geographical Indications, Trademarks, and Appellations of Origins are of particular relevance for agriculture trade.

• Geographical Indications: protect marks, symbols, etc. connected to geography of origin

• Trademarks: protect distinctive marks that indicate source

• Certification Marks: indicate a certified level of quality

• Collective Marks: indicate a product made by a collective of producers.

• Appellation of Origin: comes from the Lisbon Agreement – protects indication of origin on products

GEOGRAPHICAL INDICATIONS:

A CLOSER LOOK

• Niche products specific to a region

• Can be collective/certification marks

• Can be protected under sui generis legislation/administrative

law

• Up front cost is higher: administering/enforcing required

GI REQUIREMENTS: INFRASTRUCTURE

• A regime for GIs requires administrative agencies

and regulatory infrastructure to establish and

enforce standards.

• GIs often result from sui generis legislation. This

regime type has a much higher up front investment

by countries and producer organizations.

• Registration, auditing, and enforcement systems all

need to be set up ahead of time.

TRADEMARKS AND THE GI:

OVERLAPS/TENSIONS

• TMs protect distinctive marks that indicate origin of a good

the source of a good or service. They can also be collective

marks reflecting a standard of quality.

• A branding mechanism to secure market share—diffused

through advertising.

• Belongs to a company, not a region

• Trademarks can consist of geographical terms, but must

have secondary meaning (e.g., Montblanc)

CERTIFICATION MARKS

Subset of Trademarks

• Indicate a quality or safety standard

• May be used by anybody who complies

with the standards defined by the certifying

authority

COLLECTIVE MARKS

• Owned by an organization

• Members use mark to identify with a level of quality or accuracy,

geographical origin, or other characteristic

• Can be used by a variety of traders that belong to the

association

APPELLATIONS OF ORIGIN

• Designates product origination

• Essential to geographical environment

• Lisbon Agreement, Art. 3:

“Protection shall be ensured against usurpation or imitation,

even if the true origin of the product is indicated or if the

appellation is used in translated form or accompanied by

terms such as ‘kind,’ ‘type,’ ‘make,’ ‘imitation,’ or the like.”

GEOGRAPHICAL INDICATIONS IN EUROPE

• EU: 25-30% of agricultural products covered by GIs

• Price Premiums

• Can register in EU

Need to specify Producer Group; Protection in Country of

Origin

EXAMPLES FROM AU

FUTURE POSSIBILITIES

Niger Galmi Onions

Ghana Kente Cloth

Ugandan Bark

Cloth

Rooibos Tea

TRADEMARKS /GEOGRAPHICAL INDICATIONS

Trademark Geographical

Indications

Holder Company/Private Region/Producer

Organization

Protects Distinctive marks Origin indicator

Value Through marketing Inherent to region’s

uniqueness

Pre-establishment

costs

Little – marketing only High – standard

setting, admin,

producer organization

Post-establishment

costs

Maintenance and use High – auditing/

enforcing

Foreign Protection Almost everywhere Mainly EU

Participation

Restriction

Any distinctive mark Only geographic

significance

International

Agreements

TRIPS TRIPS – marks for

wine/spirit only

TRADEMARKS OR GEOGRAPHICAL INDICATIONS?

CASE STUDY: ETHIOPIA V. STARBUCKS

• Obtained Trademark Protection over Yirgacheffe, Harrar,

Sidamo Coffee Brands to force Starbucks to License

• GI Protection was too expensive

• Remember: the problem with trademarks is that the

consumer association must be with qualities independent of

origin.

GEOGRAPHICAL INDICATIONS FOR THE AU?

BENEFITS OF GIS

Economic

Producers: quality product sold at premium price

Consumers: quality product assurance, unique product

Noneconomic

Rural development stimulation

Spillover: tourism

Reputational

Never Generic

A UNIVERSE OF IMPLEMENTATION OPTIONS

GI

TM

Cert

Collect

Paris

Convention

THE PARIS CONVENTION

1883 Paris Convention on Intellectual Property

First international treaty on intellectual property protection

Article 10 of the Paris Convention gives remedies for unlawful use of

indications of source on goods. No source indication can be used if it

refers to a geographical area from which the indicated products do no

originate. Appellations of origin and geographical indications are not

expressly mentioned, but gives protection to “indications of source.”

The Paris Convention allows parties to make special agreements

between themselves for the purpose of protecting industrial property.

The Lisbon agreement is an example of such a special relationship.

1(2): “The protection of industrial property has as its object patents,

utility models, industrial designs, trademarks, service marks, trade

names, indications of source or appellation of origin, and the

repression of unfair competition”

CERTIFICATION

• Product Labeling/Food safety standards

• Collective: reserved for members of a collective

body Certification granted by a certification

authority or a private association/granting body

• Agricultural label

TRADEMARK/UNFAIR COMPETITION

• Based on consumer confusion – commercial

practices mislead by false designation of

geographical origin

• Need to have secondary meaning for

geographical marks

• Prior use rights

LISBON AGREEMENT

“The geographic name of a country, region, or locality, which

serves to designate a product originating therein, the quality and

characteristics of which are due exclusively or essential to the

geographic environment, including natural and human factors”

Not just protection from usurpation/imitation – no misleading of

consumers is required.

AO protection based on a geographical environmental feature –

natural or human factor

AO protection through a single registration process – any party to

Paris Convention

Cannot become generic if still protected in country of origin

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 characteristic of the good is essentially

attributable to its geographic origin.”

Three distinction in levels of TRIPS protection

Geographical indications for all products (low)

Wines and spirits (medium)

Wines only (high)

SUI GENERIS LAWS

• Based on Public Law via administrative procedure

• Application for geographical indication/decree establishing

origin

• Need to be clear on protection

• Needs opposition procedure

REGIONAL SYSTEMS

EC (Pecorino Romano, Arroz del Delta del Ebro)

Heightened protection for wines, spirits

Heightened protection for GIs

OAPI

Bangui 1977 Agreement

Bilateral Agreements

Mainly concerning wine trades

CURRENT GI TRENDS

• GI use expanding

• Proposals in WTO to expand GI protection

• Note: US hesitant to recognize expansion

CHALLENGES OF GI REGIMES

• Conflict with Trademarks

• Foreign Market Access

• Compliance

• Distribution

• Cultural know-how

CONFLICT WITH TRADEMARKS

• Many countries (including the US) favor heavily trademarks over

geographical indications.

• GIs also do not automatically guarantee access to foreign markets.

• Ensuring compliance with GI standards.

• GIs are a great way to showcase the cultural know-how of a

geographical region. However, there is no accompanying trade

secret law, cultural know-how is not protected in that way for GIs.

FOREIGN MARKET ACCESS

• Having a GI does not guarantee access or

sales in a foreign market.

• Needs recognition and acceptance

• Compliance with foreign market

standards

COMPLIANCE WITH STANDARDS

• One of the biggest downsides of implementing a GI regime is the

enforcement aspect. GIs have an implication of quality and

uniqueness that needs to be maintained.

• Any foreign standards of safety or quality needs to be met or

exceeded by the certification.

• A set of domestic standards need to be identified and a means for

certifying products to those standards needs to be implemented. In

addition an auditing process needs to be rigorously maintained to

ensure continuing quality.

• SPS/TBT Considerations

DISTRIBUTION OF BENEFITS

• Getting the GI protection for a mark, setting up and maintaining quality may

create a price premium.

• However, getting the price premium is not the end of the story. Countries

using geographic origin marks need to ensure that the profits are distributed

back to the producers.

• This may require further infrastructure investment up front.

CULTURAL KNOW-HOW

• It is important to remember that GIs do not have any inherent trade

secret protection.

• GIs protect products coming from a geographical area from copying or

confusion.

• GIs also showcase local know-how and culture. However, the

protection only extends to the products, not the methods to create

them.

WHAT IS REQUIRED FOR GI PROTECTION

IMPLEMENTATION?

STEPS FOR GI PROTECTION

1) Identify Potential Products

Market Assessment

Product link with Geography

2) Set Standards

3) Framework

4) Producer Organizations

5) Marketing/Packaging

IDENTIFY PRODUCTS

• What products are marketable for trade?

• What products are tied to a geographic area?

STANDARDS

• What quality standards are required by foreign countries?

• What quality standards are feasible?

In setting standards it is important to take

into account standards of safety and

health in foreign countries. It is also to

keep in mind that the standards of quality

set must be feasible for producers to meet.

FRAMEWORK

Institutional

Marketing

Distribution

Production

Legal

National or regional law

Agency creation

Registration process

PRODUCER ORGANIZATION

• Who qualifies as a producer?

• What standards will the organization set?

• How many producers will qualify?

• Who will run the organization?

MARKETING STRATEGIES

Marketing in Different Countries?

Direct sell?

Licensing?

How to package?

Mark needs to be prominent

SHOULD THE AU INVEST IN GIS?

ARIPO POSITION ON GIS

May 2010: Regional Workshop on the Protection of

Geographic Indications in the African Member States of

the ACP

Recommendations for ARIPO:

Sensitize, assist Member States in setting up National Legal

System on GIs

Harmonize laws of Member States on GIs

Ensure legal system of Member States are adjusted to

international conventions on GIs

Regularly disseminate information/strategies on GIs to African

Member States

OAPI

Through the Bangui Act of 1999, the OAPI officially recognizes:

• Patents

• Utility Models

• Trademarks and Service Marks

• Industrial Designs

• Trade Names

• Geographical Indications

• Layout Designs of Integrated Circuits

• New Plant Varieties

• Literary and Artistic Works

BANJUL PROTOCOL ON MARKS

• African Intellectual Property Organization (OAPI)

• Banjul Protocol on Marks established a Trademark filing

system.

• Now compatible with TRIPS

PARTICIPATION IN INTERNATIONAL TREATIES

Treaty AU Members

OAPI Benin, Burkina Faso, Cameroon, Central African

Republic, Chad, Congo, Côte d'Ivoire, Equatorial

Guinea, Gabon, Guinea, Guinea-Bissau, Mali,

Mauritania, Niger, Senegal, Togo

ARIPO Botswana, Gambia, Ghana, Kenya, Lesotho, Liberia,

Malawi, Mozambique, Namibia, Rwanda, Sierra Leone,

Somalia, Sudan, Swaziland, Tanzania, Uganda,

Zambia, Zimbabwe

LISBON Algeria, Burkina Faso, Congo, Gabon, Togo, Tunisia

Banjul Protocol Botswana, Gambia, Ghana, Kenya, Lesotho, Malawi,

Mozambique, Namibia, Sierra Leone, Sudan,

Swaziland, Tanzania, Uganda, Zambia and Zimbabwe

TRIPS 41 members, 11 nonmember/observer states

COORDINATING AU POLICIES

• GI’s or any other regime of protection cannot exist in isolation

• To make the most of its investment in a GI regime (or other form of

protection), the AU must coordinate policies that have the most

direct impact on the quantity, quality and sustainability of agricultural

trade

• These include the AU’s innovation, agriculture, IP, ToT, and science

and technology policies.

AU POSITION ON AGRICULTURE

Market Access

Increase access for African agricultural products

Tariff reduction

Enhance supply capacities

Self-selection of products

Domestic Support

Reducing trade-distorting support by developed countries

LDCs exempt from reduction commitments

Export Competition

Reduction of export subsidiaries

Differential treatment in favor of LDCs

ALIGNING INNOVATION AND AGRICULTURAL

POLICIES

• At present, farmers’ needs and those of agri-business too

often do not sufficiently drive the orientation of agricultural research and extension services, causing lack of relevance and impact.

• Even when relevant, know-how and technologies are too often not widely taken up by farmers, suggesting also the lack of effectiveness in the transfer of technologies.

• In spite of its socio-economic impact, the agricultural research does not come high on the list of priorities in the Poverty Reduction Strategy Papers of African countries (FAAP, 2006).

THE FUTURE?

No matter what policy path (s) the AU

chooses, enhancing agricultural exports and

securing greater markets requires an effective

policy eco-system that nurtures innovation,

promotes R&D in agricultural products,

encourages the development of defensible

standards and facilitates the development of

producer organizations.

THANK YOU