Geographical indications for foods, trips and the doha development agenda

Journal of African Law

Volumn 47, Issue 2, 2003, Pages 199-220

  Echols, Marsha A ^a  

^a HOWARD UNIVERSITY   (United States)

Author keywords

[No Author keywords available]

Indexed keywords

EID: 84967218834     PISSN: 00218553     EISSN: 14643731     Source Type: Journal    
DOI: 10.1017/S0021855303002092     Document Type: Article

References (89)

1. U.S. Patent and Trademark Office, “Geographical Indications”, http://www.uspto.gov/web/ offices/dcom/olia/globalip/geographicalindication.htm (visited 28 April, 2003). They are source identifiers, indicators of quality, business interests, and intellectual property.
2. For a description of geographical indications by developed countries, see OECD (S. Lucatelli), Appellations of Origin and Geographical Indications in OECD Member Countries: Economic and Legal Implications, COM/AGR/APM/TD/WP (2000) 15/Final (2001).
3. In the United States a great impetus to the development of genetically modified crops, among other products, occurred when the Supreme Court permitted the patenting of a genetically modified bacterium in Diamonds. Chakrabarty, 447 U.S. 303 (1980).
4. “Society is a group of people united by social relationships, their culture is their way of life.” R. Stark, Sociology, Baltimore, 1996, 43.
5. In contrast, a trademark recognizes an individual source and offers individual ownership. As stated by the U.S. Trade Representative (USTR) in its September 2002 paper on GI's, “intellectual property rights are private rights”.
6. M. Lewanika, “Traditional Knowledge: Recognition and Protection”, A paper presented in Nairobi, Kenya, 30–31 July, 2001, http://www.mindfully.org/GE/African-Traditional-Knowledge30jul01.htm (visited 4 June, 2003).
7. See also, S. Ekoue, Cuisine et Traditions: Recettes d'Afnque, Paris, 2003, for descriptions of food traditions from throughout Africa.
8. Signed in Bangui on 2 March, 1977. The Bangui Agreement was revised in 1999 and entered into force in February 2002. The revisions were designed to bring the Bangui Agreement into conformity with the TRIPS Agreement. Its article 12 and Annex VI address geographical indications. As of May 2003 the only geographical indication registered is Korhogo cotton. The revisions of the Bangui Agreement have been criticized as being against the interests of African countries. In particular its new rules regarding plant varieties have been criticized by several nongovernmental organizations, which prefer the approach of the OAU Model Legislation on the Protection of the Rights of Local Communities, Farmers and Breeders and for the Regulation of Access to Biological Resources. See, e.g., J.A. Ekpere, “Loi-Modele de l'OUA pour la protection des droits des communautes locales, des agriculteurs et des selectionneurs et la reglementation de 1'access aux resources biologiques”, in ICTSD, Commerce, developpement durable et propriete intellectuale vus de l'Afnque, Geneva, 2002
9. South Centre, “Africa's Model Law on Community Rights under Attack”, South Bulletin 15, http://www.southcentre.org/info/southbulletin/ bulletin 15/southbulletin 15–01.htm (visited 4 June, 2003).
10. FAO, Report of the World Food Summit: five years later, 10–13 June 2002–Part One, para. 7, http://www.fao.org/DOCREP/MEETING/005/Y7106e/Y7106E/Y7106E09.htm (visited 9 June, 2003).
11. See E. Neuborne, “Big brands (small companies)”, Business Week, 13 Aug., 2001, 12. It is not only rural areas in developing countries that would benefit from an expansion. Switzerland is one of the countries that perceives GI's as a means of adding value to farm products as the government liberalizes its agricultural regime and reduces subsidies.
12. “An extra dollar of income in the hands of a poor farmer might lead to 50 cents worth of demand for products and services from other rural poor, 40 cents of demand for products produced by poor urban residents, and only 10 cents of demand for products produced in the formal urban sector or imported from abroad. In the hands of a rich farmer, nearly the whole dollar escapes the economy of poor people.” World Bank, World Development Report, Washington, D.C., 2002, 88.
13. Copenhagen Declaration on Social Development and Programme of Action of the World Summit for Social Development, Copenhagen, 6–12 March, 1995, http://www.un.org/esa/socdev/wssd (visited 9 June, 2003).
14. One of the Millennium Development goals is to reduce by half the proportion of people who live on less than $1 a day and who suffer from hunger by the year 2015. U.N. Millennium Development Goals, http://www.un.org/millenniumgoals/index.html (visited 30 April, 2003).
15. IFAD, Rural Poverty Report 2001, Rome, 2001, 1 http://www.ifad.org/poverty/index.htm (visited 9 June, 2003).
16. For a report on rural poverty in eastern and southern Africa, see, IFAD, Evaluation de la Pauvrete rurale: Afnque Onentale et Australe 2002, http://www.ifad.org/poverty/region/pf/PFfre_ partl.pdf (visited 9 June, 2003).
17. A paper presented at a Food and Agriculture Organization seminar estimates that the agricultural sector occupies 1.3 billion people or half the world's active population. FAO (M. Mazoyer), Protecting Small Farmers and the Rural Poor in the Context of Globalization, Rome, 2001, 2.
18. The Rural Development Strategy of the World Bank is evidence of the recognized need for and importance of rural development. The strategy has four features, focusing on the poor, fostering broad-based growth, addressing the entire rural space and forging alliances of all stakeholders. The broad-based growth feature recognizes that agriculture will be the main engine of rural economic growth. Nevertheless the Bank will try to add non-farm economic activities and to involve the private sector. The strategy takes a holistic Entire Rural Space approach and employs “cross-sectoral” thinking. World Bank, Reaching the Rural Poor: A Renewed Strategy for Rural Development, Washington, D.G., 2002. The Bank's strategy: Highlights for Agriculture??
19. OEGD, Multfunctionality: Towards an Analytical Framework, Paris, 2001, 7–9.
20. Multfunctionality: Towards an Analytical Framework, 6. One concept, multi-functionality, is a recognition that “economic activity may have multiple outputs and, by virtue of this, may contribute to several societal objectives at once.”
21. Multfunctionality: Towards an Analytical Framework, 6. However, the “inclusion of rural employment and food security in the discussion of multi-functionality has been controversial.”
22. Multfunctionality: Towards an Analytical Framework, 8. There are many other approaches to rural development. Two contrasting programs are AgConnect, a program of the Catholic Campaign for Human Development designed to address the root causes of poverty through the promotion and support of community-controlled, self-help organizations and through transformative education http://www.nccbuscc.org/cchd/aboutus.htm (visited 9 June, 2003) and the calls for action to prevent the negative impacts of dumping and exchange rate manipulation on domestic, small farmers.
23. According to the New Partnership for Africa's Development (NEPAD), the added value per worker ($/year) is lowest in sub-Saharan Africa ($285), when compared with other regions (e.g., $412 in South Asia and $3,028 in Latin America and the Caribbean) and with the world ($645). “Table 1: Comparison of agricultural indicators between Africa and other developing regions and income categories”, in NEPAD Newsletter: The Food Crisis in Africa (May 2003).
24. See, e.g. 15 U.S.G. 1127. A certification mark may certify that goods originate in a certain locality. Two of the oldest certification marks on the U.S. Principal Register are “Grown in Idaho” for potatoes and “Roquefort” for cheese. Others include Darjeeling for tea and Swiss for chocolate.
25. U.S.G.
26. The US Organic Foods Production Act of 1990, 7 U.S.G. 6501, et seq. permits a certified organic product, e.g., an apple, to be labelled with the place of origin, if the information is a truthful. “Organically Grown in Montana” would be permitted.
27. See, Institut National Des Appellations v. Brown-Foreman Corp., 47 USPQ2d 1875, (TTAB) (“Cognac” is a common law regional certification mark, not a generic term, because purchasers in the United States primarily understand “Cognac” to refer to brandy from the Cognac region of France and because production is controlled in France by the National Institute on Appellations of Origin to meet standards of regional origin.
28. See, INAO, “LTnstitut National des Appellations d'Origine: PDO and PGI”, Paris, 2001.
29. Namibia–Review of Legislation, IP/Q/NAM/1 (1 May, 2003).
30. See, OAU, “African Model Legislation for the Protection of the Rights of Local Communities, Farmers and Breeders, and for the Regulation of Genetic Resources”, available at http:// www.africaction.org/adna/trd0101.htm
31. see Mwananyanda Mbikusita Lewanika, “Traditional Knowledge: Recognition and Protection”, (July 2001) available at http://www.mindfully. org/GE/African-Traditional-Knowledge30jul01.htm (visited 4 June, 2003). The OAU Model Legislation speaks in its Preamble of the rights of a State and its people over their biological resources. Others link biological resources and GLs by positing that the value added through a geographical indication might encourage farmers and others to preserve local biodiversity, the environment, and traditional knowledge.
32. Agricultural Product Standards Amendment Act, Act No. 63 of 1998.
33. After several years of negotiations, the South Africa–European Communities Bilateral Trade, Development and Co-operation Agreement was signed in Pretoria on 11 Oct., 1999. O.J. L311, 4 Dec, 1999.
34. H. Rademeyer, “The Protection of Geographical Indications in South Africa”, in WIPO, Symposium on the International Protection of Geographical Indications, 1–2 September, 1999, 35, 36.
35. This landmark European rule is contained in Council Regulation (EEC) No. 2081/92 of 14 July, 1992 on the protection of geographical indications and designations of origin for agricultural products and foodstuffs, O.J. L 208, p. 1, 24 July, 1992. An illustration given by the World Intellectual Property Organization makes the point about the mixed regional and national protections offered under E.G. law.
36. “Geographical indications may be used for a wide variety of agricultural products, such as, for example, ‘Tuscany’ for olive oil produced in a specific area of Italy (protected, for example, in Italy by Law No. 169 of 5 February, 1992), or ‘Roquefort’ for cheese produced in France (protected, for example, in the European Union under Regulation (EG) No. 2081/92….)” WIPO, “What Is a Geographical Indication?”, above, n. 29.
37. For a brief history of international attempts to agree on rules regarding geographical indications, see Bernard O'Connor, Geographical Indications in National and International Law, Brussels 2003, 19–39.
38. See WIPO, above, n. 15,20–22.
39. “… the TRIPS Agreement reflects a very sensitive compromise in an area that was one of the most difficult to negotiate during the Uruguay Round. Such sensitivity may be attributed to, among other things, the apparent growth in recognition of the commercial significance of geographical indications, in particular in respect of agricultural and food products, for exporting countries that may rely upon the added value that geographical indications may bestow.” D. de Sousa, “Protection of Geographical Indications under the TRIPS Agreement and Related Work of the World Trade Organization (WTO)”, in Symposium on the International Protection of Geographical Indications, 28–29 November, 2001, 2.
40. The term GI, when coined by WIPO, was used to refer to a name or symbol, such as Victoria Falls or the Eiffel Tower. “That means that a GI could be any expression–not necessarily the name of the place where the product originated–that could serve the purpose of identifying a given geographical place”, such as Jambon de Parma. South Centre (S. Escudero), “International Protection of Geographical Indications and Developing Countries”,July 2001,5.
41. “If a geographic term is used merely to indicate the location or origin of goods and services, it is purely descriptive… [D]escriptive geographical terms are in the ‘public domain’ in the sense that every seller should have the right to inform customers of the geographical origin of his goods. Therefore, a seller must build up good will and consumer recognition in a descriptive geographical term in order to have a legally protectable interest, and take the term out of the public domain.” J.T. McCarthy, Trademarks and Unfair Competition, New York, 1984, § 14.1. If traditional names are not addressed under TRIPS, they fall under the WTO Agreement on Technical Barriers to Trade, as implied by the Australian request for consultations with the E.C. See n. 3, above.
42. USPTO, above, n. 1.
43. TRIPS, art. 24.6.
44. TRIPS, art. 24.5.
45. TRIPS, art. 22.2(a), which provides, “In respect of geographical indications, Members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good.”
46. TRIPS, art. 22.2(b), requires that a Member provide the means to prevent “any use which constitutes an act of unfair competition within the meaning of Article 10bis”.
47. The protections of article 22 are applicable against a GI that “although literally true as to the territory, region or locality in which the goods originate, falsely represents to the public that the goods originate in another territory.” TRIPS, art. 22.4.
48. TRIPS art. 24.1 states, “Members agree to enter into negotiations aimed at increasing the protection of individual geographical indications under Article 23 [Additional Protection for Geographical Indications for Wines and Spirits]”.
49. TRIPS, art. 24.1.
50. The European Communities and Switzerland are major proponents–or demandeurs–of an extension. They are joined by Cuba, India, Morocco, Kenya, Mauritius, Morocco, and Turkey, among others, on some or all of the arguments. They also point to the results of the Singapore Ministerial Conference and the reference by the TRIPS Council in its 1996 annual report to article 24.1, which makes increased protection under article 23 a built-in agenda item. D. de Sousa, above, n. 53, 7.
51. “Positions remain quite divided. Issues where differences are still profound are: the legal effect of registrations, mechanisms for settling differences regarding geographical indications, and participation.” Council for Trade-Related Aspects of Intellectual Property Rights, Sixth Special Session of the Council for TRIPS: Report by the Chairman, Ambassador Eui-yong Chung, to the Trade Negotiations Committee, TN/IP/6 (5 May 2003). For a description of the negotiating positions, see UNCTAD (D. Rangneker), Geographical Indications: A Review of Proposals at the TRIPS Council: Extending Article 23 to Products other than Wines and Spirits, Geneva, 2003. An indication of the position of United States' industry can be gleaned from International Trademark Association, “Establishment of a Multilateral System of Notification and the Registration of Geographical Indications for Wines and Spirits pursuant to TRIPS Article 23(4)”, Submission to the WTO TRIPS Council, http://www.wto.org/english/forums_e/ngo_e/pospap_e.htm (visited 9 June, 2003). That of the European food industry is contained in Confederation of the Food and Drink Industries of the European Union, “CIAA Approach on Improving the Protection of Geographical Indications in International Trade under the WTO TRIPS Agreement”, 19 December, 2002. http://www.ciaa.be/uk/Documents/positions/eco/TCO24902.htm (visited 10 June, 2003).
52. “We agree that special and differential treatment for developing countries shall be an integral part of all elements of the negotiations and shall be embodied in the schedules of concessions and commitments and as appropriate in the rules and disciplines to be negotiated, so as to be operationally effective and to enable developing countries to effectively take account of their development needs, including food security and rural development. We take note of the non-trade concerns reflected in the negotiating proposals submitted by Members and confirm that non-trade concerns will be taken into account in the negotiations as provided for in the Agreement on Agriculture.” Doha Declaration, above, n. 12, para. 13.
53. With regard to the TRIPS Agreement, developing countries' obligations under the Agreement were delayed under art. 65.2. Least-developed developing countries must begin to implement TRIPS in 2006.
54. TRIPS, art. 66.1.
55. An international commission urged further research, perhaps by UNGTAD, to assess for developing countries the costs of implementing the current obligations, the role of GTs in development, the costs and benefits of an extension and the costs and benefits of each proposal to create an international register. “In our view it is far from clear whether these countries will be able to gain significantly from the application of geographical indications.” U.K. Commission on Intellectual Property Rights, “Integrating Intellectual Property Rights and Development Policy 90–91”, London, 2002.
56. For wines TRIPS article 23.4 mandates negotiations concerning the establishment of a “multilateral system of notification and registration” to facilitate GI protection.
57. Using the E.C.-South Africa negotiation of a trade agreement as an example, the results of the two proposals can be better understood. “Under the U.S.-Japan proposal, South Africa would only have been required to give consideration to the fact that grappa and ouzo are protected under EU law in deciding whether South African producers could use these names in South Africa… Under the EU proposal, however, South Africa would have been required to end the domestic use of the names grappa and ouzo because of their protection in the EU.” ASIL Insights (Judson O. Berkey), “Implications of the WTO Protections for Food Geographic Indications”, April, 2000. http://www.asil.org/insights/insigh43.htm (visited 1 June, 2003).
58. H. Rademeyer, above, n. 45, 35. “Developed wine industries find the concept [a reserve list of names for future geographical indications] hard to understand because their industries and geographical indications are established and not subject to major changes. This is however essential for the orderly development and protection of geographical indications in a developing industry.”
59. “Implications of the WTO Protections for Food Geographic Indications”.
60. For wines, the registration of a trademark that contains or consists of a GI shall be refused or invalidated. TRIPS, art. 23.2.
61. USPTO, above, n. 1.
62. Case G-108/01, Consorzio del Prosciutti di Parma, Salumifiao S. Rita SpA and Asda Stores Ltd., Hygrade Foods Ltd. (ruling that, for procedural reasons, the Commission may not argue that the Prosciutto di Parma designation of origin prohibits economic operators from slicing and packaging the ham outside the region of production).
63. Basmati is a variety of rice grown in the Punjab. Exports of this rice earn about $300 million annually. The Indian and Pakistani growers faced both patent issues and/or naming issues in the United States and United Kingdom. Specifically the U.S. agreed with claims that basmati is a generic term. In contrast the U.K. and Saudi Arabia have enacted provisions recognizing that basmati rice originates in India or Pakistan. See, U.K. Commission on Intellectual Property Rights, above, n. 78, Box 4.5.
64. See TRIPS, art. 24.5.
65. See, American Bar Association (Section of Intellectual Property Law), Res. 202–203, Multilateral Systems and Features of Systems on Appellations of Origin.
66. WIPO, above, sct/6/3, n. 32, 24.
67. A. Stoppard, IPS, “SA, US firms fighting over ‘rooibos’ trademark”, 21 August 2002, http:// www.woza.co.za/aug02/rooibos21.htm (visited 7 May, 2003).
68. H. Rademeyer, above, n. 45, 36.
69. South African farmers used “homonymous” names for their farms and production, carrying with them names like La Champagne and Languedoc. A. Stein, “The Protection of Geographical Indications in South Africa”, in Symposium on the International Protection of Geographical Indications, Geneva, 1999, 31. Small food companies in many countries would like to use what they consider generic terms, like feta and gouda, for their artisanal production.
70. See, T. Cabot, “Naming rights: Is America the home of the free but not of the brie?”, The Washington Post, F1, 21 May, 2003.
71. Annex VI, art. 6. Moreover, each application is examined to determine whether the applicant is entitled to apply for a registration. Id., at art. 9(1).
72. If the person is not entitled to apply, then the application must be rejected. Id., at art. 9(2).
73. Annex VI, art. 15(1). Once the products are in commerce “any person shall have the right to use the geographical indication for those products.” Id., at art. 15(2).
74. See, Bangui Agreement, art. 12(3).
75. However, once the products are in commerce in conformity with the registration, anyone may use the geographic indication for that product. Bangui Agreement, art. 15(2).
76. This point is made also in Cote d'lvoire–Examen de la Legislation, Response aux Questions Posees par les Gommunautes Europennes et Leurs Etats Membres, above, n. 41.
77. See, TRIPS, art. 22.2(a).
78. “To rely on the consumer (referred to as ‘the public’ in the Agreement) in order to determine whether or not the use of a geographical indication is misleading or constitutes an act of unfair competition and making protection dependent on this is not adequate and effective protection of an intellectual property right. To take public opinion as the decisive criterion in granting protection results in unpredictable and uncertain protection, dependent on time and place. Such protection can lead to arbitrary decisions.” Communication, 2 Oct. 2001, TRIPS, para. 10.
79. Cf TRIPS, art. 23.1.
80. Cf. DSU, art. 25 (Arbitration) and art. 5 (Good Offices, Conciliation and Mediation).
81. DSU., para. 19.
82. IFAD, above, n. 19, 1, 8. Rural people often face very high physical and transaction costs of marketing per kilometer-tonne, which restrict trade, specialization and growth ” …, though small farms are generally inefficient and employment-intensive, globalization brings new strains–and prospects. It links product sales … increasingly to exports to rich countries and to supermarkets …: This exposes farmers to a range of requirements, from uniform product appearances through pesticide rules to restrictions on child labour. The cost per unit of output … is initially much higher on small farms.
83. Such agricultural globalization can determine their economic advantages. Stimulating and supporting institutional remedies may be vital to a pro-poor trajectory. It can be done …” IFAD, above, n. 19, 10–11.
84. This is an argument made by Kenya and Nigeria, among others. Communication, IP/C/ W/308/Rev.l, above, n. 105. Developing WTO Members are beginning to implement these commitments. See, e.g., Cote d'lvoire–Examen de la Legislation, Responses aux Questions Posees par les Etats Unis, above, n. 41.
85. All WTO Members except the least developed countries must now implement the TRIPS Agreement. The least developed countries must comply by 1 January, 2006. TRIPS, art. 66.1.
86. TRIPS, arts. 66 (Least-Developed Country Members) and 67 (Technical Go-operation). Article 67 is mandatory. Members must provide on request–but on mutually agreeable terms-technical and financial co-operation.
87. “Recalling the Preamble to the Marrakesh Agreement, we shall continue to make positive efforts designed to ensure that developing countries, and especially the least-developed among them, secure a share in the growth of world trade commensurate with the needs of their economic development. In this context, enhanced market access, balanced rules, and well targeted, sustain-ably financed technical assistance and capacity-building programmes have important roles to play.” Doha Declaration, above, n. 12, para. 2.
88. See, e.g., Cote d'lvoire–Examen de la Legislation, Actions de formation et de sensibilisa-tion, above, n. 41.
89. See, e.g., Janice Hunt, “Ubusulu Palm Wine carves a niche”, South African Food and Beverage Manufacturing Review, Jan. 2001, http://www.worldfoodscience.org/vol2_I/report2–2.html (visited 17 Sept., 2001).