The Rationale for Protecting Geographical Indications in Nigeria – Oreoluwa Adebayo

Intellectual Property

28th October 2020

Oreoluwa Adebayo[1]

 

The Rationale for Protecting Geographical Indications in Nigeria

 

Introduction

Some readers of this piece may wonder why Champagne is not produced in Nigeria, Argan oil not manufactured in China or even Tequila not made in the United States of America? Indeed, there are products peculiar to certain geographical regions, and which can only be produced in those regions. Under international Intellectual Property (“IP”) regimes, it is unlawful to produce these peculiar products in other regions asides the region in which they are originally made.

Despite recent legal formalization, geographical indications date back to the 4th century BC. The act of requesting for products based on their place of origin, was usual among the ancient Mediterranean peoples (Greeks and Romans), because they learned over time that products coming from certain places had particular qualities.[2]

What are Geographical Indications?

A Geographical Indication (“GI”) is a sign which identifies goods as originating in a specific locality or region in a country, given that the quality, reputation or other characteristics are essentially attributable to the specific locality or region[3] and can be used for both agricultural and industrial products. According to the World Trade Organization (“WTO”) Trade-Related Aspects of Intellectual Property Rights (“TRIPS Agreement”) 1994,[4] 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.[5] There must therefore be a clear link between the product and the original place of production.[6]

Geographical indications are typically used for agricultural products, foodstuff, wine and alcoholic drinks, handicrafts, and industrial products.[7] Examples of products that enjoy protection of geographical indications include Champagne from France, Scotch Whisky from Scotland, Havana Tobacco from Cuba, Darjeeling Tea from India, Penja pepper from Cameroon, Thai Silk from Thailand, Bohemian Crystal from Czech Republic, Swiss watches from Switzerland, Argan Oil from Morocco, Tete goat meat from Mozambique, etc. Geographical indications are usually perceived as part of the cultural heritage of their localities and a means to commercialization.

A geographical indication enables those who hold the right to use the indication to prevent its use by a third party whose product does not conform to applicable standards of production.[8]  For example, in the jurisdictions in which the Darjeeling geographical indication is protected, producers of Darjeeling tea can exclude use of the term “Darjeeling” for tea not grown in their tea gardens or not produced according to the standards set out in the code of practice for that geographical indication.[9]

Legal Framework for GIs

There are a number of international conventions and treaties that offer protection for GIs such as the TRIPS Agreement, the Paris Convention,[10] the Madrid Agreement and Protocol,[11] the Lisbon Agreement[12] and the Geneva Act on the Lisbon Agreement.[13]

The term “geographical indication” is usually used interchangeably with Appellations of Origin and Indications of Source, although these terms have been variously defined. An Indication of source is “an indication referring to a country (or to a place in that country) as being the country or place of origin of a product.”[14] An indication of source provides information about the geographical origin of a product but does not imply any special quality or characteristic of the product for which it is used.[15] An Appellation of Origin is the geographical denomination of a country, region, or locality, which serves to designate a product originating therein, bearing the quality or unique characteristics which are due exclusively or essentially to the geographical environment, including natural and human factors which has given the product its reputation.[16] In the Paris Convention 1883, the term geographical indication is not used, but that Convention adopts the terms ‘indications of source’ and ‘appellations of origin’. The Paris Convention protects any expression or sign used to indicate that a product or a service originates in a country, region or a specific place as an indication of source without conveying any element of quality or reputation. The Agreement prohibits any direct or indirect use of false identification of a product and also prohibits the use of indications that are liable to mislead the public as to the nature, manufacturing process, characteristics, suitability for their purpose, or quality of the goods.[17]

The Madrid Agreement and Protocol (1891 & 1989) protects indications of source and restricts their misuse by unauthorized persons. This Agreement seeks to prevent the marketing of goods with false or misleading assertions as to their sources. The Lisbon Agreement 1958 refers to Appellations of Origin, and defines it as a geographical denomination of a country, region, or locality, which serves to designate a product originating therein, the quality or characteristics of which are due exclusively or essentially to the geographic environment, including natural and human factors.[18] The Geneva Act on the Lisbon Agreement, 2015 provides for appellations of origin and geographical indications. It permits the international registration of geographical indications in addition to appellations of origin through a single registration procedure with the World Intellectual Property Organisation (“WIPO”). It also permits the accession to the Act by certain intergovernmental organizations, including the European Union and the African Intellectual Property Organization (“OAPI”).[19]

Geographical indications, indications of source, and appellations of origin, allude to the fact that certain products are peculiar to specific places and as a result, should be protected as such. There have been several attempts to differentiate these terms, it is however, opined that these attempts are merely academic. For example, some writers in attempting to differentiate between GIs and Appellations of Origin argue that in GIs, production of raw materials and the development or processing of the product do not necessarily have to take place entirely in the geographical area while with Appellations of Origin, the production of raw materials and the development or processing of the product need to take place entirely in the defined geographical area. Distinctions like this are an unnecessary hairsplitting exercise and can be conceptually confusing.[20] It is recommended that these terms are better utilized interchangeably.

In Africa, two regional organisations are relevant to intellectual property protection and they include the African Intellectual Property Organization (“OAPI”) and the African Regional Intellectual Property Organisation (“ARIPO”).[21] In OAPI Member Countries, the Bangui Agreement of 1977[22] recognizes GIs and protects appellations of origin within its member states. According to this Agreement, GI means “…an indication that serves to identify a product as originating from a territory, a region, or a locality within that territory, in those cases where the quality, reputation or other specific characteristic of the product may be essentially attributed to such geographical origin.”[23]  The Bangui Agreement provides protection for natural, agricultural, craft or industrial products upon registration pursuant to the filing procedures of Article 7 of the Agreement. However, ARIPO, which was established in 1976 to consolidate the resources of its membership in IP related matters, does not provide for the protection of GIs.[24] It recognises the potentials of geographical indications in the protection of the quality products of member countries. As such, efforts have been ongoing since 2010 towards creating a common GI specific agreement by ARIPO Member States.[25]

Differences between Geographical Indications and Trademarks

The term communal trademark has been used to classify GIs, collective marks and certification marks, primarily because GIs are sometimes viewed as a subset of trademarks.[26] Although there are several similarities between GIs and trademarks, GIs essentially differ from trademarks in several respects.

Trademarks are trade insignias 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.[27]

A trademark provides protection to the owner by preserving the exclusive right of the proprietor to use it to identify goods or services or to authorise another to use it in return for payment. The protection of geographical indications is, usually, enjoyed by all traders from a particular geographical location.[28]

Trademarks personalise 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.[29]

The development of trademarks is linked to human creativity and such creativity is capable of generating an original and novel sign or expression, which permits a certain product or service to be distinguished from similar products or services. As such, trademarks place an emphasis on the producer of a product. Geographical indications on the other hand are linked to topography, climate or other factors, independently from human creativity. Geographical indications underscore the origin of the product and some derived characteristics by virtue of a product’s geographical location.[30]

Unlike a trademark where there is a single person or entity entitled to use the marks, all producers belonging to the region or locality where the geographical indication emanates are entitled to use it.

Since a trademark is used to distinguish the products of a specific trader from those of its competitors, it is not likely to be descriptive and it cannot be generic in nature. Geographical indications are by definition generic descriptions because a geographic name denotes the geographical origin of the product it identifies. In many countries, a geographical indication will normally not be registered as a trademark for a product, because a geographical indication is considered to be insufficiently distinctive.[31]

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.[32]

Functions of Geographical Indications

Geographical indications are instruments used to promote products commercially. They can generate wealth, add economic value, and protect the producing region from invading counterfeiting activities. They also facilitate economic development, expand the export of products, strengthen the domestic market, and promote the products and their historical and cultural heritage, among other functions.[33] Other key functions of GIs include:

  1. Product differentiation, which are useful to consumers as they pay increasing attention to the geographical origin of products, and care about specific characteristics present in the products they buy.[34] In many cases, the place of origin suggests to consumers that the product will have a particular quality or characteristic that they may value.
  2. Contributing to the social and economic development of rural areas. The entitlement to use a geographical indication generally lies with local producers, and the added value generated by it accrues therefore to all such producers. In addition, they may bring value to a region not only in terms of jobs and higher income, but also by promoting the region as whole.[35]

Preservation of traditional knowledge and traditional cultural expressions. This is because products identified by Geographical Indications are often the result of traditional processes and knowledge carried forward by a community in a particular region.[36]

 

Legal Regimes for Protecting Geographical Indications

Geographical indications are protected through a wide variety of approaches, developed in accordance with different legal traditions and various historical and economic conditions. The major ones are the Sui Generis system, and Trademark Law.[37]

In some jurisdictions, GIs are protected through the “sui generis” system, which applies specifically and exclusively to them.[38] Sui generis, from the Latin meaning “of its own kind”, is a term used to identify a legal classification that exists independently of other categorizations because of its uniqueness or as a result of the specific creation of an entitlement or obligation. Sui generis methods of intellectual property protection may provide legal protection for signs and characteristics associated with a product, such as a logo or a specific shape, by including them in the related product specifications.[39] This system establishes a specific right over geographic indications, separate from any other IP right. A sui generis protection system exists in the European Union, India, Russian federation, Switzerland, Thailand, the Andean Community countries and the African Intellectual Property Organization (OAPI), among others.[40]

Geographical indications can also be protected either through the registration of collective marks which may only be used by members of an association, to which they belong; or through certification marks which may be used by anyone who complies with the requirements defined in the holder of the mark, who acts as a certifier, verifying that the mark is used according to those requirements. For example, the use of certification mark for Idaho Potatoes[41] is restricted to certain farmers who comply with the rules that have to be observed for such use to be allowed.[42]

GIs may also be protected through laws on the repression of unfair competition, and consumer protection laws on the labelling of products.[43] These laws do not create an individual industrial property right over the GI. However, they indirectly protect geographical indications insofar as they prohibit certain acts that may involve their unauthorized use. The use of a geographical indication on a product that does not originate in the region named would be an example of an unfair trade practice.[44]

Gaps and Omissions in the Nigerian Legislation

Nigeria is a country blessed with many products that qualify for the protection as GIs. Such products include Adire, Ofada rice, Abuja Yam, kolanuts, etc., to mention a few. There are a number of international IP regimes that offer protection for GIs.[45] Nigeria is a signatory to the WTO Agreement on Trade- Related Aspects of Intellectual Property Rights (TRIPS) and the Paris Convention for the Protection of Industrial Property (Paris Convention). Some commentators contend that unlike the TRIPS Agreement, which being a component of the WTO Agreement, can potentially be enforced in Nigeria as a composite international agreement, the Paris Convention remains unenforceable in Nigeria in the absence of domestication by the National Assembly.[46] Although Nigeria ratified the Paris Convention in 1963 it is yet to domesticate it as required by Section 12 of the 1999 Constitution.[47] Nigeria is not a party to and has not ratified the Madrid Agreement Concerning the International Registration of Marks and the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks. The country’s failure to ratify these laws undermines protection of successful Nigerian trademarks against international infringement outside the borders of Nigeria and deprives Nigerian citizens of the benefits of a system intended to eliminate the inconvenience of having to make applications in other countries where protection is desired.[48] Nigeria has also not ratified the most recent treaty on GIs, the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, 2015, which allows the international registration of GIs and the accession to the Lisbon Agreement by certain intergovernmental organizations.

Under the World Trade Organization (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPs), WTO members, including Nigeria, have a mandatory responsibility to recognize and protect GIs as intellectual property rights.[49] 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,[50] 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.[51]

The Act thus, recognizes only certification marks and does not expressly provide for GIs. The procedure and formalities for registering a certification mark can be found in the Trade Marks Regulations.[52] However, Nigeria is yet to establish a sui generis legislation on GIs, neither has it been introduced into Nigerian legal jurisprudence and economic policy objectives.[53] Similarly, there is no existing articulated government policy in place for GIs nor are there other methods of protection in place for GIs. By and large, the scope of protection offered by the existing Trade Marks Act in Nigeria for GI names is minimal if not non-existent when compared to the comprehensive EU GI system.[54]

Although there are proposed legislations in Nigeria that appear to offer protection for Geographical Indications, such as the Trade Mark Bill,[55] and the Intellectual Property Commission (IPCOM) Bill,[56] these bills have not been passed into law and thus cannot impact the protection of GIs.

Conclusion

Despite being enriched by nature and intellect, Nigeria has not demonstrated its willingness to take advantage of the benefits afforded by the protection of GIs. There are no viable laws and policies on the protection of GIs and as such, Nigeria has missed several opportunities that the protection of GIs affords including the facilitation of trade and economic development from grassroots level upwards. Although, Nigeria has ratified the TRIPS Agreement and the Paris Convention, she has however, not domesticated these treaties,[57] thus making it difficult to enforce the provisions of these laws in the country. It is therefore recommended, that the provisions of section 12 of the constitution should be interpreted appropriately to protect and preserve Nigeria’s sovereignty and territorial integrity but not to avoid international obligations properly assumed.[58] This is essential because ratification reflects a country’s willingness to be bound by the obligations imposed by treaties and, the cumbersome or unending process of domesticating treaties even after the process of ratification, defeats the whole essence of ratification thus resulting in the neglect of international obligations. Furthermore, it is recommended that there should be a specific legislation in Nigeria that governs the protection of GIs like Pakistan’s Geographical Indications (Registration and Protection) Act 2020.[59] More so, there is a need for the establishment of an office to cater for matters bordering on GIs, as the Trade Marks, Patents and Designs Registry is already overburdened with pending trademarks, patents and design matters.[60] It is recommended that Nigeria should enter into bilateral trade agreements with other trading partners targeted at enhancing the value of GIs (like the China-EU agreement on geographical indications entered on July 20, 2020), to strengthen Nigeria’s GIs protections regime once introduced.[61]

 

_______________________________________________________________

For further information on this article and area of law,

please contact Oreoluwa Adebayo at S. P. A. Ajibade & Co., Lagos by

Telephone (+234.1.270.3009; +234.1.4605091 (+234 1 4605092)

Mobile (+234.811.389.8102, +234.817.939.0319)

Email: oadebayo@spaajibade.com

www.spaajibade.com

 

1     Associate Intern Intellectual Property Department, SPA Ajibade & Co., Lagos, Nigeria.

[2]     L.E. Faria, R.S. Oliveira, N. Santos, “Propriedade Intelectual na Agricultura”, Belo Horizonte (2012), pp. 289-310.

[3]     Corporate Affairs and Intellectual Property office, Barbados, “Geographical Indications” available at <https://caipo.gov.bb/home/index.php/intellectual-property/geographical-indications-act/item/202-what-are-some-examples-of-geographical-indications#:~:text=Some%20examples%20include%20%E2%80%93%20Darjeeling%20Tea,made%20from%20the%20blue%20agave> accessed on 29th July, 2020.

[4]     Agreement on Trade-Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) [hereinafter TRIPS Agreement].

[5]     Section 3, art. 22, TRIPs Agreement 1994.

[6]     Supra, note 3.

[7] WIPO, “Frequently Asked Questions: Geographical Indications” available at  <https://www.wipo.int/geo_indications/en/faq_geographicalindications.html> accessed on 1/09/2020.

[8]     Supra, n. 7.

[9]     Ibid.

[10]    Paris Convention for the Protection of Industrial Property (March 20, 1883; effective July 7, 1884 and amended June 2, 1934 and July 14, 1967).

[11]    Madrid Agreement Concerning International Registration of Marks, April 14,1891,23 U.S.T. 1353, 828 U.N.T.S. 389 and Protocol Relating to Madrid Agreement Concerning International Registration of Marks, June 27, 1989, S. TREATY Doc. No. 106-41, Hein’s No. KAV 6242.

[12]    Lisbon Agreement for the Protection of Appellations of Origin and their International Registration of October 31, 1958, revised at Stockholm on July 14, 1967 and amended on September 28, 1979.

[13]    Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications, May 2015.

[14]    Supra, note 7.

[15]    World Intellectual Property Organisation, “General Course on Intellectual Property; Geographical Indications” p. 9.

[16]    Article 2(1) of the Lisbon Agreement.

[17]    Article 10bis (3), Paris Convention on the Protection of Industrial Property of 1883.

[18]    Article 2 of the Lisbon Agreement 1958.

[19]    World Intellectual Property Organisation “Geneva Act of WIPO’s Lisbon Agreement Enters into Force” available at <https://www.wipo.int/lisbon/en/news/2020/news_0001.html#:~:text= The%20Geneva%20Act%20of%20the%20Lisbon%20Agreement%2C%20adopted%20May%2020,certain%20intergovernmental%20organizations%2C%20including%20the> accessed  on 16th September, 2020.

[20]    Supra, n. 15 p. 13.

[21]    See, Seble G. Baraki, “The Perils and Promises of Intellectual Property Rights in African Countries: The Case of Sui Generis Protection in South Africa”, in Intellectual Property and Development: Perspectives of African Countries, (E. Azinge and H. Chuma-Okoro eds.) Nigerian Institute of Advanced Legal Studies (2013), p. 107.

[22]    Agreement Revising the Bangui Agreement of March 2, 1977, on the Creation of an African Intellectual Property Organisation (as amended on February 24, 1999), Annex VI.

[23]    Article 1(a), Title I of the Bangui Agreement, 1977.

[24]    Supra, note 21, p. 108.

[25]    Ibid.

[26]    See, A. Adewopo et al, “A Consideration of Communal Trademarks for Nigerian Leather and Textile Products”, in Innovation & Intellectual Property: Collaborative Dynamics in Africa, (Jeremy de Beer et al., eds.), UCT press, 2014, p. 109 at 111-113. 

[27]    Escudero, Sergio, “International Protection of Geographical Indications and Developing Countries”, South Centre Working Papers 10 (2001), p.11.

[28] World Intellectual Property Organisation, “What does a trademark do?” available at <http://www.wipo.org/about-ip/en/about-trade marks.html> accessed  on 26th August, 2020.

[29]    Escudero, supra, n.27.

[30]    Ibid.

[31]    Felix Addor and Alexandra Grazioli, “Geographical Indications beyond Wines and Spirits A Roadmap for

a Better protection for geographical indications in the WTO TRIPs Agreement”, The Journal of World Intellectual Property, Vol.5, No.6, (November 2002), p. 870.

[32]    Michael Blakeney,”Trade Related Aspects of Intellectual Property Rights: A Concise Guide to TRIPs Agreement”, London: Sweet & Maxwell, 1996, p. 632.

[33]    V.A. Castro, J.de M.E. Giraldi, “Estratégias de Marcas para Setores Brasileiros: uma análise das diferenças conceituais entre Indicação Geográfica”, Anais do VII Encontro de Estudos em Estratégia, ANPAD, (2015), pp. 1-17.

[34]    World Intellectual Property Organisation, Geographical Indications: An Introduction, available at  <https://www.wipo.int/edocs/pubdocs/en/geographical/952/wipo_pub_952.pdf>, accessed on 6th August 2020.

[35]    Ibid.

[36]    Ibid.

[37]    World Intellectual Property Organisation, “General Course on Intellectual Property; Geographical Indications” p. 16.

[38]    These are special laws that apply specifically or exclusively to geographical indications and/or appellations of origin.

[39]    Legal Protection of Geographical Indications, available at <http://www.fao.org/fileadmin/user_ upload/foodquality/fichefiles/en/c6.1.pdf> accessed on 26th August 2020.

[40]    Supra, n. 37.

[41]    “Idaho® potato” and the “Grown in Idaho®” seal are federally registered Certification Marks that belong to the Idaho Potato Commission (IPC). They ensure that consumers are purchasing potatoes that have been grown in the state of Idaho in the United States.

[42]    Supra, n. 15.

[43]    WIPO, General Course on Intellectual Property; Geographical Indications p. 17.

[44]    Supra, n. 43.

[45]    See the discussion under the sub-topic “Legal Framework for GIs”, supra.

[46]    See, A. Adewopo, n. 26, supra at 117.

[47]    Constitution of the Federal Republic of Nigeria [Nigeria], Act No. 24, 5 May 1999, available at: <https://www.refworld.org/docid/44e344fa4.html> Accessed on 12 September 2020.

[48]    Supra, note 26, p. 118.

49     Nigeria has been a member of the World Trade Organization since 1 January 1995.

[50]    Trademarks Act, Cap T 13, Laws of the Federation of Nigeria 2004.

[51]    Section 43, Trade Marks Act.

[52]    See Reg. 40-43.

[53]    Solomon Gwom, protection of geographical indications in Nigeria: A legal and policy deficit, p. 2., available at < https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3425560>  accessed on September 1, 2020.

53     Ibid.

[55]    A bill for an Act to repeal the Trademarks Act CapT13 Laws of the Federation of Nigeria 2004 and enact the Trademarks 2016 to provide for a comprehensive law relating to trademarks and related matters, 2018 (SB. 357).

[56]    This proposed bill was meant to be passed into law in 2012.

[57]    Supra n. 26, p. 117.

[58]    Flora Onomrerhinor, “A Re-Examination of The Requirement of Domestication of Treaties in Nigeria”, (2016) NAUJILJ p. 21 available at <https://www.ajol.info/index.php/naujilj/article/ view/136236/125726#:~:text=The%20provisions%20on%20the%20domestication,law%20by%20the%20National%20Assembly> accessed on September 12, 2020.

[59]    Faisal Daudpota, “Geographical Indications Law of Pakistan – An Overview” available at <https://papers.ssrn.com/sol3/papers.cfm?abstract_id=3609010> accessed on September 1, 2020.

[60]    Supra, n. 53.

[61]    The Trademark Lawyer. “Gang HU offers an overview on the China-EU agreement on geographical indications”, available at <https://trademarklawyermagazine.com/hu-gang-offers-an-overview-on-the-china-eu-agreement-on-geographical-indications/?utm_source=Trademark+Newsletter&utm_campaign=0648f54ef6-EMAIL_CAMPAIGN_2018_09_06_09_00_COPY_01&utm_medium=email&utm_term=0_05a0362b3f-0648f54ef6-194680025> accessed on September 12, 2020.

 

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