Global IP Matrix - Issue 5

Examples of well-known Geographical
Indications include “Darjeeling Tea,” “Persian
Rugs,” “Swiss Watches,” “Champagne” and
from Nigeria, (though no provision has been
made for the registration of GI), one can
think of “Ofada Rice” and “Dongoyaro Tea.”
While most often used in food products,
Geographical Indications can be used to
identify unconsumable products that may be
associated with a specific geographic location.
4
is made in Article 1 (2) and Article 10 of the
Paris Convention, where the latter Article
in dealing with false indications of goods,
states that the provisions dealing with goods
unlawfully bearing a trademark and their
seizure:
“…shall apply in cases of direct or indirect use
of a false indication of source of the goods or
the identity of the producer, manufacturer, or
merchant.”
Any producer, manufacturer, or merchant,
whether a natural person or a legal entity,
engaged in the production or manufacture of/
or trade in such goods and established either in
the locality falsely indicated as the source, or in
the region where such locality is situated, or in
the country falsely indicated, or in the country
where the false indication of source is used,
shall in any case be deemed an interested party.
as climate, soil, or traditional methods of
production, etc. 8
The term “appellation of origin” is mentioned
in Article 1(2) of the Paris Convention and is
defined in Article 2 of the Lisbon Agreement
thus:
“Appellations of origin means the geographical
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 essentially to the
geographical environment, including natural
and human factors. The country of origin is the
country whose name or the country in which
is situated the region or locality whose name
constitutes the appellation of origin which has
given the product its reputation”.
Three elements are identifiable in the above
definition: 9
The use of Geographical Indications allows
producers to obtain market recognition
and often a premium price. With the
increased internationalisation of food and
product markets, Geographical Indications
have become a vital source of marketing.
Geographical Indications are also often
associated with non-monetary benefits such as
the protection of knowledge and community
rights. 5
In order to fully understand the meaning of
Geographical Indications and how the term is
derived, there are at least two other important
concepts linked to the idea of Geographical
Indications that must be analysed, these
being; “indication of source” and “appellation
of origin.”
Long before a multilateral agreement was
reached on the definition of Geographical
Indications, and how they are to be protected,
i.e., TRIPS Agreement; the concepts of
“indication of source” and “appellation
of origin” were incorporated in other
international treaties. These are: the Paris
Convention for the Protection of Industrial
Property of 1883 (Paris Convention), the
Madrid Agreement for the Repression of False
or Deceptive Indications of Source on Goods
of 1891 (Madrid Agreement), and the Lisbon
Agreement for the Protection of Appellations
of Origin and their International registration
of 1958 (Lisbon Agreement). 6
i. INDICATION
OF SOURCE
Indication of sources refers
to a sign that indicates that a
product originates in a specific
geographical region.6 An example
being, Ofada Rice, which refers
only to geographic origin. It is the
broadest concept when compared
to Geographical Indications and
appellations of origin and appears
in both the Paris Convention and
the Madrid Agreement. Neither
agreement, however, defines
indication of source. Reference
Further clarification of the notion of
“indication of source” is found in Article 1(1) of
the Madrid Agreement:
“All goods bearing a false or deceptive
indication by which one of the countries to
which this Agreement applies, or a place
situated therein, is directly or indirectly
indicated as being the country or place of origin
shall be seized on importation into any of the
said countries.”
Article 1(2) of the Paris Convention defines
objects for the protection of industrial
property and refers to both “indication of
source” and “appellation of origin,” which
may suggest that both expressions could be
synonymous. There are, however, distinct
differences between the two.
ii. APPELLATION OF
ORIGIN
This refers to a sign that indicates that a
product originates in a specific geographical
region only when the characteristic qualities
of the product are due to the geographical
environment, including natural and human
factors. 7
Unlike an indication of source, which is only
subject to the condition that a given product
originates in the place designated by the
indication of source, the use of appellation
of origin requires a quality linkage between
the product and its geographical origin. This
means that certain characteristics of the
product should be essentially or exclusively
attributable to its geographic origin, such
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a. The appellation must be a direct
geographical name (not symbols or other
kinds of expression) of the country, the
region or the locality.
b. The appellation must serve as a
designation of the geographical origin
for the product, which means that the
product and geographical name must be
the same, such as Porto or Bordeaux;
c. The quality and characteristics exhibited
by the product must be essentially/
exclusively attributable to the designated
area of geographical origin.
Relative to the Madrid Agreement, these
conditions for qualifying appellations are
higher, thus narrowing the range of possible
indications. An example of protected
appellations under the Lisbon Agreement
includes ‘Bordeaux’ for wine.
The African Landscape
Geographical Indications, taken as any
geographical name or sign affixed to a good
which conveys geographical information that
is useful in identifying the origin, reputation
and qualities of the product can be legally
protected in two primary forms in Africa.
Defensive protection, which focuses on the
prevention of misleading indications and
unfair competition and positive protection
involving the registration of a Geographical
Indication either through a sui generis
system or as trademarks. The legal means for
obtaining defensive protection would mainly
be through unfair competition laws, common
law rules on passing off or case
law.
There exists the possibility of
obtaining positive Geographical
Indication protection, in one form
or another, in all but six African
countries. 10
For these six countries, there is
no positive protection available,
or there is no reliable information
on whether positive Geographical
Indication protection can
be obtained. Among the 47
countries where there is some
level of positive protection, such
protection can be obtained under