ATUSIUBA CHUKWUEBUKA TOCHUKWU
Have you ever wondered why we have to import champagne or why America can not locally make Scottish Whisky. It all boils down to a term in intellectual property law known as Geographical Indication. There are several types of Intellectual Property Rights some of which include; Copyright, Patent, Trademark and Geographical Indication. Many of us must have heard of the first three but not the forth one and there is a valid explanation as to why that is.
UNDERSTANDING GEOGRAPHICAL INDICATIONS (GIS).
According to the World Intellectual Property Organization(WIPO), Geographical Indication is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. According to the World Trade Organization (“WTO”) Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) 1994, Geographical Indications are, for the purposes of the Agreement, indications which identify a product as originating in the territory of a Member, or a region or locality in that territory, where a given product quality, reputation or other characteristic is essentially attributable to its geographic origin. Put a different way, it is the protection of a particular name or indication in order to ensure that only those who are within that geographical area can use that name.
There are a number of international conventions and treaties that offer protection for GIs such as the TRIPS Agreement, the Paris Convention, the Madrid Agreement and Protocol, the Lisbon Agreement and the Geneva Act on the Lisbon Agreement Geographical indications are typically used for agricultural products, foodstuffs, wine spirit drinks, handicrafts, and industrial products, this is because they are unique to that region, state or community which they are produced. For better understanding, examples of geographical indications are Havana Tobacco from Cuba, Penja pepper from Cameroon, Tete goat meat from Mozambique, Scotch Whisky from Scotland, Argan Oil from Morocco. It should be stated here that what is protected here is the name so that such protected name can not be used by a third party who does not manufacture the product in the region to use the name. Protection of the name is similar to another type of Intellectual Property Right we know which is Trademark, however they are not the same thing.
DIFFERENCE BETWEEN GEOGRAPHICAL INDICATION AND TRADEMARK
Geographical indications (GIs) identify a product as originating from a particular place. By contrast, a trademark identifies a good or service as originating from a particular company. So while trademark is the protection of a particular name for a company so that no other 3rd party can use it, GIs protects the name so that no other person who is not from that region can use it. In essence, Trademarks are trade insignia and identifiers of product source, and expressions such as “Coca Cola” “Peugeot”, “Marlboro”, and “Citibank” are some examples. All of these marks distinguish products or services and or their producers, manufactures or providers in the marketplace, while Geographical indications such as “Cognac”, “Pilsen”, “Tequila”, and “Champagne”; identify and distinguish the geographical origin of a given product. Following from the above is the fact that while anyone who manufactures the product protected by GIs can produce it using that particular name, trademarks are exclusive to the company that registers it. So that no other person not permitted by the company can use that mark.
Also, Trademarks personalize and identify products and services from a specific manufacturer, producer or service provider in order to differentiate such goods or services from competing goods and services. However, geographical indications do not identify a single producer or manufacturer, but rather a place of origin.Trademarks are freely transferable whilst geographical indications are not freely transferable, as a user must establish the appropriate association with the geographical region and must comply with the production practices of that region to be entitled to their use.
WHY IS GIS IMPORTANT
Geographical indications ensure the development of trust in the market place. If you want a scotch whisky, you are most likely to prefer one produced in Scotland than a counterfeit manufactured in another place. It also therefore provides authenticity, so that whenever a person hears the name of the product, it will easily be attributable to that area, region or country. It is also a form of branding which spreads the reputation of the geographical area. In addiction, it does a lot for the sustainability of agriculture because as confidence in the product name grows, there is increased demand for it which translates to more sales and in turn ensure that the manufacturers are motivated to stay in business.
HOW CAN GEOGRAPHICAL INDICATION BE PROTECTED
The two major ways in which GIs can be protected includes: Sui Generis system, and Trademark Law. Sui Generis is Latin meaning “of its own kind”. This kind of protection arises when the country provides a one of its kind law in other to protect the registered GIs in the country. What this means is that the law created is specifically to protect those GIs. This system establishes a specific right over geographic indications, separate from any other IP right. For Trademark Law, this is applicable where GIs are protected by the already established trademark laws of the state. To that extent there is no need to create its own kind of law as once registered it is protected under the trademark law of the state.
HOW IS GIS PROTECTED INTERNATIONALLY
Registration or protection of GIs nationally cannot protect/prevent the use of the name abroad because of sovereignty of nation. That is, the laws of one state can not be binding on other state. There was therefore a need to protect these GIs internationally. The World Intellectual Property Organization have created or improved on the previous creation to provide a single international procedure for obtaining protection in more than one country. The Geneva Act of the Lisbon Agreement protects Geographical Indication in a much broader notion than the Lisbon agreement of the 1950s, which only recognized application of origin. This new Act also accommodates and recognizes both the sui genris and the trademark law modes of protecting GIs.
THE NIGERIAN SITUATION
Certain types of intellectual property in Nigeria such as Trademark, Copyright and Patent have their own laws which protect intellectual property rights that fall under them. However that is not the case for Geographical indication as there is no sui generis law that protects it. According to Dr. Shefiu Adamu Yauri, the Registrar, Trademark Registry of Nigeria, Nigeria has about 10,000 geographical indications products which are unfortunately not protected. Among them are Benue-yam (which is misappropriated and re-branded as Ghana yams in overseas markets), cotton from Taraba, potatoes from Plateau region, Sokoto goats skin (misappropriated as morocco leather), Kebbi or (Lake rice), Abakaliki rice, Ofada rice, Ijebu garri, and Gongola highland tea. He went on to state that lack of specific GIs protection legislation in the country has made some of these products to exist in the international market as products of some other country, as in the example of Sokoto goats skin which is commonly presented as Moroccan Leather(or the popular Benue peps yams).
The only relevant provision in a local legislation in Nigeria, that bears a semblance to a GI provision can be found in the Trade Marks Act,1965 which provides:”A mark adapted in relation to any goods to distinguish in the course of trade goods certified by any person in respect of origin, material, method of manufacture, quality, accuracy or other characteristic, from goods not so certified shall be registrable as a certification trade mark in Part A of the register in respect of those goods in the name, as proprietor thereof, of that person: Provided that a mark shall not be so registrable in the name of a person who carries on a trade in goods of the kind certified. However this in no way provides an express protection for GIs. Adding to that, Nigeria has not domesticated any of the acts or agreement that seeks to protect Geographical Indications and this is what has led to product created in Nigeria to be re-branded with the names of another country.
POSSIBLE ROLE PROTECTION OF GIS CAN PLAY IN THE DEVELOPMENT OF NIGERIA.
It must be stated here that GIs is not a magic wand that will fix the economic problem we face in Nigeria. In fact, even when our geographical indication is protected, it will take a lot of time and resources before we see its influence on our economy. However, Rome was not built in one day. Some of the benefits; In this era of globalization, there is no harm in taking advantage of the benefits of GIs protection to facilitate national growth and economic development. So the assurance of the protection of GIs will ensure that our products sold outside our shores will bear the name of the locality which has been protected. It can also serve as a tool to add value to products which have been duly protected. This is because, once they are protected, they automatically become a brand per se The back bone of Nigeria’s economy for the future is based on agriculture. When the name our agricultural products are protected as a brand, there will be more trust as well as visibility of the product.
The aforementioned in turn will lead to exportation of good which helps towards the growth of our GDP and the value of our currency. Other advantages of GIs are that they have notable developmental characteristics as they uniquely emphasize local production which helps the economy to grow from the ground up. Because the products that have gotten international recognition is now in high demand, there will be need to employ more people. It will also help to ensure that products created in any locality in Nigeria is not taken aboard and re-branded to another name.
For many reasons, some of which has been stated in this paper, the Nigerian Government is unable maybe even unwilling to enact a sui genris act or improve the trademark Act to protect GIs. It is therefore of utmost importance that the government of the day not only carry out one of the two options above but also domesticate and ratify the Geneva Act on the Lisbon Agreement.
Atusiuba Chukwuebuka is a Legal Practitioner with Special interest in Intellectual Property Law, where he has done numerous research on various areas of the subject and has volunteered in different organizations aimed at promoting the study of IP Rights, advocacy and research. He obtained his LL.B from Chukwuemeka Ojukwu University and is currently Practicing with Anoka & Associates, a law firm based in Lagos Nigeria.
This is the first in his monthly series on Intellectual Property in a bid to get young people especially members of Legal Ideas Forum International interested in one of the emerging Frontiers of legal practice in Nigeria. Chukwuebuka is a Grand Lifinite, an Executive and a founding member of the Forum.