The need for recognition and protection of geographical indications in South Africa Prof Johann Kirsten Head of the Department of Agricultural Economics, Extension and Rural Development at the University of Pretoria

What are geographical indications? Mere geographical place names are not intellectual property rights (IP). Geographical Indications are IP rights as they seek to reward the link between products, people and places that have developed over time based on traditional practices. GIs are place based names that convey the geographical origin as well as the cultural and historical identity of an agricultural product.

WTO TRIPS Agreement of 1994 Recognises GIs for the first time internationally as an IP right. Establishes a world wide minimum standard of protection for GIs binding on all members of the WTO. Article 22(1) of TRIPS defines geographic indications as “indications which identify a good as originating in the territory of a member or a region or locality in the territory where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.” Provides that GIs of all products are protected against misleading use of a geographical designation of goods not originating in the territory indicated.

WTO TRIPS Agreement of 1994 Requires Member countries to provide: “the legal means for interested parties to prevent (a) […] the use of any means […] which misleads the public as to the geographical origin of the good […] or (b) any use which constitutes an act of unfair competition […].” . As not prescriptive in approach to GI protection, countries have approached it differently around the world. Main methods of protection include: consumer protection and unfair competition laws, trade mark registration systems administrative schemes of protection sui generis protection for GIs.

GIs protected under EU sui generis registration system More than 837 GIs have been registered under EU Regulation 510/2006 including: Champagne - France Prosciutto di Parma - Italy Rioja wine – Spain First registration of developing country GI in EU: Columbian Coffee

GIs registered in the United States under trade mark laws Geographical indications protection provided in US under the same system used to protect registered trademarks. Examples of USPTO registered certification marks include: “Idaho” and “Grown in Idaho” owned by State of Idaho Potato Commission Vidalia” owned by Georgia Department of Agriculture for onions “100% Napa Valley” owned by Napa Valley Vintners Association for grape wine

Foreign GIs registered in the United States Some well known foreign GIs are also protected in the US as geographical indications under the certification mark system: Darjeeling tea - India Jamaica Blue Mountain Coffee - Jamaica Parmigianno rigianno Stilton cheese - UK Prosciutto di Parma - Italy

Protection of GIs in developing countries Various developing countries have introduced legal protection to recognise and protect the cultural and commercial value of indigenous resources. Some have chosen sui generis systems and others followed US approach of protection under trade mark laws. Well known developing country GIs India – Basmati rice Ceylon tea – Sri Lanka Tequila – Mexico

Protection of GIs internationally Difficult to give complete list of GIs protected in world due to differences in legal systems. But estimated that there are currently more than 10,000 protected GIs in the world with an estimated trade value of more than US$ 50 billion (Giovanucci, 2009).

But why protect GIs? GIs the result of a process whereby collective reputation is institutionalised in order to solve problems that arise from information asymmetry and free riding on reputation. This highlights a fundamental feature of geographical indications protection in that it functions as both: Consumer protection measure (through addressing information asymmetries and quality) and Producer protection measure (through its role in protecting reputation as an asset)

But why protect GIs? The economic rationale for protecting GIs further derives from the fact that the resources of the region may be captured in the origin labelled product as quality attributes (Pacciani et al, 2001). Added value derived from this leads to a differentiation based on product “qualities” and consequently to the creation of niche markets. Could potentially lead to capturing a price premium and improved livelihoods.

But why protect GIs? Rural development potential Provides strong argument for developing countries to protect GIs as these countries often have typical products based on the interaction between local know-how (including selection, production and processing) and particular environmental conditions. Provide a tool by which rural producers can enter niche markets and attempt to extract a premium, thereby contributing to improving their living conditions. Dependent on an inclusive and representative industry organisation that ensures participation of local actors and an equitable distribution of rent.

Geographical indications in South Africa In contrast to some European countries, SA does not have a long history of protecting GIs. So is this a concept that is applicable to the South African context? Need for GI protection initially arose from SA experience of usurpation of reputation of well known origin based products. An important feature of the international standards landscape is that

Near loss of IP in name Rooibos US trade mark dispute highlighted the potential threat to the industry’s legal rights in the name Rooibos. Rooibos registered as a trade mark in the US Effectively prevented the marketing of Rooibos products under Rooibos name in the US Costly 10 year legal battle to expunge TM registration Near loss highlighted the need for local industries to be proactive in protecting their cultural property rights and served as catalyst for move towards incorporation of collective IP strategies in the industry.

Misappropriation of the name “Karoo” Strong evocative value of ‘Karoo” has significant marketing potential which should be used to benefit of Karoo community. But commercial value of the name “Karoo” has led to widespread misappropriation. Search of TM register indicates that the name is being appropriated by various individuals and businesses . Woolworths and Shoprite Checkers designed marketing strategies for lamb around use of name “Karoo”.

Examples of misuse of the Karoo name Karoo Cafe and Karoo Art House, Pretoria Karoo Cattle and Land Restaurant chain (restaurants in Irene, Pretoria, Fourways, Blouberg!) Great Karoo market place restaurant, Ohio, USA Le Karoo Bar B-Que in France [http://www.restaurant-karoo.com/index.html

Geographical Indications in South Africa A research project led by Univ of Pretoria was conducted to establish potential of South African products to benefit from GI protection.

Geographical Indications in South Africa Project identified numerous SA products that could potentially benefit from GI protection including: Nguni hides Camdeboo mohair Honeybush Rooibos Karoo Lamb

Geographical Indications in South Africa Use of geographical indications is not limited to agricultural products. GIs may also highlight specific qualities of a product which are due to human factors that can be found in the place of origin of the products, such as specific manufacturing skills and traditions. Traditional handicraft products could therefore also potentially benefit.

Challenges for SA geographical indications Registration of a GI per se not guarantee of benefits of GI. In addition to appropriate legal framework also need strong institutional framework: producer associations, quality control agencies and enforcement bodies Also need for technical and financial assistance: Continuous marketing efforts Continuous quality control