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by Chinasa Uwanna

Introduction

According to the World Intellectual Property Organisation (“WIPO”), a Geographical Indication (GI) is a “sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin.”. Therefore, a sign is classified as a GI where it clearly indicates an undisputable connection between a product which emanates from an identified geographical region as a result of the product’s characteristics, quality, reputation, production expertise and consumption experiences. This connection may be direct (e.g. the name of the geographical region, like Paris or France) or indirect (e.g. the Tour Eiffel name or symbol which is a well-known landmark in Paris, France and as such to many, symbolizes Paris and France).

GIs may be found in practically every industry, but they are most common in the agricultural, textile, food and fashion industries. Common examples of internationally recognised GIs include: “Cognac” and “Champagne” from France, “Scotch Whisky” from Scotland, “Port” from Portugal, “Havana” from Cuba, “Tequila” from Mexico, “Darjeeling” from India, “Parmesan Cheese” from Italy,  “Café de Colombia” from Colombia”, “and “Swiss” or “Swiss made” (in respect of watches) among others from Switzerland.

In Nigeria, we make geographical references to indicate the originality and quality of products, such as “Ijebu Garri” from Ijebuland, “Aso Oke”, “Adire”, “Ofada Rice” from South Western Nigeria and “Ose Nsukka” from Enugu State, to mention but a few.

However, for the most part, only locals familiar with them recognise and value their source. This is an unsatisfactory state of affairs as awareness and respect for local origins and methods of production can boost demand for Nigerian products locally and internationally. In this regard, GIs are critical drivers of economic growth for any country. For instance, France has been very tenacious in its efforts to protect and promote its GIs, thereby ensuring that its locally produced wines and spirits retain their commercial appeal and leadership in the market. A good example is the appellation, “Champagne” which has come to be associated with luxury and festivity amongst wine lovers globally. “Champagne” is reserved exclusively for wines harvested and produced in the Champagne region of France. Consumers globally have to rely on the exportation of Champagne, as no wine produced outside the Champagne region and outside the prescribed standards of quality can validly use the name “Champagne” in relation to its products. Thus, more income is generated for the local producers in France and for the economy. The same is applicable to Swiss watches and all other GIs.

According to a study published by the European Commission in April 2020, on the “Economic value of EU quality schemes, geographical indications (GIs) and traditional specialities guaranteed (TSGs)”, agri-food and drink products whose names are protected by the European Union as GIs represented a sales value of €74.8 billion in 2017. Over one-fifth of this amount was generated from exports outside the European Union. The study found that the sales value of a product associated with a GI is on the average, double that for similar products without a certification. The value premium rate stood at 2.85 for wines, 2.52 for spirits and 1.5 for agricultural products and foodstuffs.

According to the EU Commissioner for Agriculture, Janusz Wojciechowski,

“European Geographical Indications reflect the wealth and diversity of products that our agricultural sector has to offer. Producers’ benefits are clear. They can sell products at a higher value, to consumers looking for authentic regional products. GIs are a key aspect of our trade agreements. By protecting products across the globe, we prevent fraudulent use of product names and we preserve the good reputation of European agri-food and drink products. Geographical Indications protect local value at global level.”

Importance of GIs

Being an indication of source, GIs inform consumers about the origin of their products, thereby evoking nostalgic feelings associated with places of origin and also creating global recognition for the products.

Furthermore, GIs incorporate the values, reputation and history of a given product borne out of the contributions of many local producers, who ultimately benefit as producers of a particular product in that region where same is duly protected, leading to the promotion of trade and investment. GIs are an important collective asset for the value creation process as global trends show.

‘Local stakeholders can make use of GIs and participate in their value creation thereby contributing to a country’s economic strength – from increased income generation, tourism and appreciation in the value of the land, to increased employment opportunities, preservation of traditional knowledge and ultimately, global recognition and promotion of regional cooperation. For example, on July 4, 2015, the United Nations Educational Scientific and Cultural Organisation (UNESCO) in recognition of the worldwide reputation of Champagne included the “Champagne hillsides, houses and cellars” in its World Heritage list. As a result, the Champagne hillsides, houses and cellars join the likes of Stonehenge, The Great Wall of China and the Pyramids of Giza, amongst many others, on the list of World Heritage sites. In other words, where a GI gains global reputation, its place of origin can boost its tourism status and in turn, its socio-economic activities.

However, where producers located outside of a particular geographical area use the GI for goods which are not compliant with the standards set by the GI, the reputation of the GI is adversely affected, resulting in a loss of demand for the products from that region. Failure to recognise a GI leaves room for another country or region to do so, and in extreme cases, a GI may suffer from ‘genericide’ – where it is easily produced outside of the geographical region, and it is difficult to establish differences or superiority in the originating region.

The Protection of GIs: National and International Frameworks

WIPO administers a number of international treaties, which provide a basis for the protection of GIs in member states. They are the:

• Paris Convention for the Protection of Industrial Property
• Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods
• Lisbon Agreement for the Protection of Appellations of Origin and their International Registration
• Madrid Agreement Concerning the International Registration of Marks, and
• Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks (which also provides for the international registration of certification marks).

In addition, Section 3 of the World Trade Organization (WTO) Agreement on Trade Related Aspects of Intellectual Property Rights (TRIPS) provides for the protection of GIs in member states. In particular, Article 22 presents the general provisions on the protection of GIs, Article 23 is focused on additional protection for wines and spirits while Article 24 covers international negotiations and exceptions.

Active steps are being taken by developed and developing countries to protect their GIs, having understood the accompanying implications on the economy.  These include one or a combination of various modes of protection namely:

• Property rights: the creation of exclusive rights like trademarks which belong to a group of many users (example collective or certification trademarks such as the Darjeeling Tea).
• Tort law via Unfair Competition: Article 10bis of the Paris Convention.
• Sui generis GI laws. Whether a name or sign would constitute a GI is determined by national laws. Many jurisdictions including the EU and some African countries have introduced sui generis regimes to protect GIs after which steps are taken to ensure international protection of the goods.

For example, Champagne and Cognac are statutorily designated GIs in France with robust frameworks for their protection globally. Organisations such as the Comite Interprofessionnel Du Vin De Champagne (“CIVC”) and the Bureau National Interprofessionnel Du Cognac (“BNIC”) were established under French laws with the primary mission to safeguard the Champagne and Cognac GIs respectively. These organisations foster the economic development of the industries as well as represent the general interest of winegrowers, professional distillers and merchants operating within the geographical locations. In addition to these Industry-specific organisations, the Institut National De L’origine Et De La Qualite (“INAO”) – formerly the Institut National des Appellations d’Origine – is a public administrative institution under the French Ministry of Agriculture, Food and Forestry, which also undertakes the responsibility of protecting all GIs in France alongside other products that originate from France. These organisations and institutions ensure the registration and protection of the GIs in other countries and internationally. They also champion the execution of agreements bilaterally and multilaterally for the protection of GIs. CIVC and BNIC have undertaken projects in various countries in efforts to eliminate the use of the name Champagne and Cognac for wine products that are not produced in their respective regions and/or subject to their specific manufacturing procedures. Furthermore, CIVC and BNIC have carried out the seizure and destruction of fake Champagne and Cognac in several countries around the world.

Similarly, in fulfilment of its international obligations under TRIPS, Uganda passed into law the Geographical Indications Act, No. 8 of 2013. The Act creates a sui generis system for the protection and registration of Gls in Uganda. The Registrar of Geographical Indications is empowered by the Act to establish and maintain a register of geographical indications and receive applications for registration. Notably, many countries without a sui generis system of GI protection resort to bilateral/multilateral treaties, collective or certification marks (like Nigeria) or rely on administrative bodies for product approval.

GIs: The Nigerian Reality 

Josling et al argue that to succeed with a GI, the following four essential components need to be provided:

• Strong organisational and institutional structures to maintain, market, and monitor the GI.
• Equitable participation among the producers and enterprises in a GI region.
• Strong market partners committed to promote and commercialize over the long term, and
• Effective legal protection including a strong domestic GI system.

In Nigeria, the legal protection of GIs is currently limited.

Recognition of GIs may be inferred from Section 43 of the Trade Marks Act which provides for the registration of certification trademarks, and the prohibition of false trade descriptions in the Merchandise Act. However, these provisions do not sufficiently cater for the protection of GIs in Nigeria, and are unenforceable abroad.  Although Nigeria is a signatory to TRIPS which establishes standards and principles for the enforcement of trade-related intellectual property rights, including GIs, TRIPS is yet to be domesticated into Nigerian law as required by Section 12 of the 1999 Constitution of the Federal Republic of Nigeria. Therefore, the provisions of the Paris Convention and the TRIPS Agreement as well as other relevant international treaties that Nigeria is a signatory to are only of persuasive effect in the country

The Court of Appeal in Procter & Gamble v. Global Soap and Detergent Industries Limited (55 NIPJD [CA. 2012] 369/2008) stated that there is usually a presumption of national will to align with international treaties, and even where such treaties are not domesticated, Nigerian courts are enjoined to align with the comity of nations to protect well known trademarks. However, this statement, being obiter dictum, does not constitute precedent.

In the absence of a sui generis system for GIs, interested parties rely on the trademark oppositions process to object to the attempted registration of GIs as trademarks in Nigeria.

The trademark opposition process is straightforward. It is the process of contesting the registration of a trademark which has been advertised in the Trade Marks Journal as part of the process of trademark registration. Under Nigerian Law, any person may oppose the registration of an advertised trademark within two (2) months of the date of its advertisement, by filing a Notice of Opposition to its registration, adducing evidence to show why the trademark ought not to be registered as a trademark in the first place. Therefore, any interested party can object to the registration of a trademark which infringes on an existing GI. This process has proved effective in the past as all the opponent has to show is proof that the proposed trademark infringes on a GI. Moreover, under Nigerian laws, a name which in its ordinary signification is a geographical name is not distinctive enough for registration as a trademark (see Section 9 (1) (d) of the Trade Marks Act). This may also be a ground for filing as opposition

Recommendations

GIs cannot be recognised internationally until they are recognised and protected locally.

Therefore, for Nigeria to avail itself of the opportunities in and benefits of its GIs, our efforts must begin at home, with the establishment of an appropriate legal framework, supported by robust efforts to promote the GIs in formalising the traditional knowledge and techniques employed by originating geographic regions, standardising methods of production, and actively driving recognition for GIs in international trade.

I offer the following five (5) recommendations to promote effective GI systems in Nigeria.

First, there should be increased sensitisation on the meaning and importance of GIs for Nigeria. For effectiveness, this may target key exports in the initial stages. Either way, it is important that people learn how to identify and classify Nigerian products as GIs. In this regard, having the relevant government agencies such as the Trademarks, Patents and Designs Registry and private sector actors reignite the conversation about creating legal reforms for GIs in Nigeria and lobby for the enactment/ratification of specific laws to protect GIs in Nigeria- as a separate, dedicated law, or through the passage of the pending IPCOM Bill which caters to GIs would be a great first step.

Aligning GIs with the present administration’s agriculture campaign since agriculture is a priority for this government. Yet, beyond the rhetoric/ banking policy, little has been done from a statutory/ legislative perspective to advance the industry. Awareness should be raised about GIs amongst stakeholders, especially policymakers, producers and consumers in agri-business because the enactment of laws to protect GIs would not be effective where the producers and consumers of these GI-eligible resources are unaware of the importance of protecting GIs and how to maximise its benefits.

Second, Nigeria should have a sui generis legislation on GIs; that is, a national law focused on the protection of GIs should be enacted as soon as possible. Protection for GIs is best provided under national laws because the enactment of such laws would lead to increased awareness of the need for adequate protection of geographic signals for all Nigerian made products, thereby resulting in increased value for exports and serve as an invaluable marketing tool in the global market, as already discussed above.

Third, close to enacting a sui genesis legislation for GIs is the domestication of treaties Nigeria has already signed, thereby ensuring the protection of Nigerian GIs in countries which have subscribed to the treaties.

Fourth, the Federal Ministry of Investment and Trade, in collaboration with other key ministries, such as the Ministry of Agriculture, and Ministry of Information and Culture, should drive the creation of an intercontinental and continental strategy for the protection of Nigerian GIs.

Another, great change would be Nigeria extending its protection of GIs through membership of sub-regional intellectual property organisations. For example, under the Organisation Africaine de la Propriété Intellectuelle (“OAPI”), each member state has a national committee responsible for the validation of GIs (and their representative groups) and further grants protection of GIs registered under OAPI, in all member states of the organisation which currently consists of seventeen, mainly Francophone, African countries.

Fifth, a specialised body should be established as a GI Agency or Commission charged with the responsibility for promoting Nigerian GIs at the international level and protecting same from infringement. This body could work closely with the above-mentioned ministries to implement the GI strategy. Practical means of enforcing the protection of GIs to prevent unauthorised use include having the local producers organised to properly research, document and standardise the unique features of GI-eligible goods. Scotch, as an example, is not any whisky made in Scotland. It is whisky made in Scotland in compliance with  detailed prescribed standards/ methods.  

Crucially, GIs cannot be recognised internationally until we protect them under Nigerian law, so all our efforts really must begin at home.

Concluding Thoughts

While recognising that GI registration does not in itself guarantee its accompanying socio-economic benefits, success of GIs internationally may be measured in decades, as it requires patient application and other sustained commitments in relevant jurisdictions. Considerable costs may also be occasioned, not just due to setting up organisational and institutional structures, but also in ensuring ongoing operational activities such as marketing and legal enforcement. Nevertheless, the benefits are worthwhile and will ultimately profit Nigeria.

The European Union having recognised the benefits of GIs, has over 6,000 GIs that it protects internationally. However, in order to realise these benefits, the appropriate legal framework must be developed in compliance with international trade protocols especially as it relates to intellectual property.

Chinasa Uwanna is a Senior Associate at Banwo and Ighodalo, a leading law firm in Nigeria. Ms Uwanna has considerable experience in every aspect of intellectual property law practice and has advised on numerous local, as well as cross-border and multi-jurisdictional transactions involving brand registration, transfer, commercialisation, protection and enforcement.