Geographical indications and the scramble for Africa, A.J.I.C.L. 2017, 25(2), 199-220
For educational use only
Geographical indications and the scramble for Africa
Getachew Mengistie and Michael Blakeney
Journal Article
African Journal of International and Comparative Law
A.J.I.C.L. 2017, 25(2), 199-220
Subject
Intellectual property
Keywords
Africa; Agricultural produce; Europe; Geographical indications; Registration; TRIPS
Legislation cited
Agreement for the Protection of Appellations of Origin and their International Registration 1958
Agreement on Trade-Related Aspects of Intellectual Property Rights 1994 (WTO) art.22, art.23
*A.J.I.C.L. 199 I. INTRODUCTION
The “Scramble for Africa’ at the end of the nineteenth and beginning of the twentieth centuries involved the European world
powers of the time colonising African territories to secure resources as a means of pursuing their international rivalries. At
the beginning of the twenty-first century the world’s intellectual property powers have again turned to Africa to enlist support
for their global intellectual property conflicts.
The Uruguay Round of the General Agreement on Tariffs and Trade (GATT) had culminated in 1994 with the formation of
the World Trade Organisation. On the initiative of the USA an instrument securing the enforcement of intellectual property
rights had been accepted as a negotiating objective at the commencement of the Uruguay Round in 1986. 1 This was enshrined
in the Negotiating Plan settled by a Decision of 28 January 1987 2 under the heading: “Trade-Related Aspects of Intellectual
Property Rights, Including Trade in Counterfeit Goods’. A draft agreement was tendered by the USA and this was
supplemented by suggestions from the European Community (EC), Japan and Switzerland. A particular concern of the EC
was that the final agreement should apply inter alia to appellations of origin.3
The European concern to protect “indications of source or appellations of origin’ dated back to the first international
intellectual property agreement: the 1883 Paris Convention on Industrial Property. This was supplemented a few years later
by the Madrid Agreement for the Repression of False or Deceptive *A.J.I.C.L. 200 Indications of Source of Goods 1891
(enacted as a special treaty under the Paris Convention). These agreements were driven principally by the lobbyists from the
wine industries of France, Spain and Portugal.4 Both agreements obliged signatories to introduce measures for the seizure of
goods carrying false indications of origin.
A more comprehensive stratagem introduced in the Lisbon Agreement on the Protection of Appellations of Origin and their
International Registration 1958 was the establishment of an international system for the registration and protection of
appellations of origin. This Agreement, which is administered by the World Intellectual Property Organisation (WIPO), did
not attract much support, with only 15 signatories in its first 20 years and only 28 signatories by September 2013. An
examination of all current appellations on the Lisbon register disclose that 11 countries hold 97.5 per cent of all registrations
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and with the top three holding over 78 per cent, of which France holds 62.5 per cent (almost 90 per cent of which were for
wines and spirits).5
The TRIPS Agreement, which managed to secure the support of most countries of the world, 6 provided a good opportunity to
the advocates of a Lisbon style of registration for geographical indications to incorporate a registration obligation. Article
22.2 of the TRIPS Agreement requires that “in respect of geographical indications’, Members of the WTO 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;
(b) any use which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris Convention
(1967).
Article 22.2 does not specify the legal means to protect geographical indications. This is left for Members to decide. Thus
geographical indications could be *A.J.I.C.L. 201 protected under consumer protection laws or as an aspect of trademark
laws, such as by a certification or collective mark or a sui generis law. In relation to (b) geographical indications could be
protected under unfair competition laws or under actions such as passing off.
However, in addition to the general protection contained in Article 22, additional protection is accorded to geographical
indications for wines and spirits by Article 23. Article 23.4 provided that “in order to facilitate the protection of geographical
indications for wines, negotiations shall be undertaken in the Council for TRIPS concerning the establishment of a
multilateral system of notification and registration of geographical indications for wines eligible for protection in those
Members participating in the system.’
This article examines the role of African countries in the TRIPS Council debates concerning the establishment of a system
for the registration of geographical indications and the extension of the protection for wines and spirits to agricultural
products. It notes the conflict between “Old World’ and “New World’ countries over the forms which geographical
indications protection should take and the attempt of the European countries to enlist African support for the European
conception of sui generis protection. The article then shifts to the recruitment by WIPO of African support for its revival of
the Lisbon Agreement, concluding with a review of Ethiopia’s non-aligned position on the protection of its Fine Coffee
brands.
II. TRIPS COUNCIL NEGOTIATIONS
The privileging of the position of wines reflecting the European contribution to the TRIPS negotiations was probably
offensive to those countries in which the consumption of alcohol is forbidden. In 1999, prior to the Seattle WTO Ministerial,
Turkey proposed the extension of the multilateral register beyond wines and spirits. 7 This proposal was endorsed by the
African group of countries. In a document of 6 August 1999 8 Kenya, on behalf of the African Group, noted in paragraph 26
that at the Singapore Ministerial the Article 23.4 negotiations concerning a multilateral register for wines had been extended
to include spirits. Consequently, it was submitted in paragraph 27 of Kenya’s communication on behalf of the African Group
that:
Considering that Ministers made no distinction between the two above-mentioned products, the African Group is of the view
that the negotiations envisaged under Article 23.4 should be extended to other categories, and requests, in this regard, that the
scope of the system of notification and registration be expanded to other products recognizable by their geographical origins
(handicrafts, agro-food products).
*A.J.I.C.L. 202 At the TRIPS Council meetings in 2000 misgivings were expressed by some delegations about the extension
of Article 23.1 protection and the multilateral register beyond wines and spirits. In the meeting of the TRIPS Council held on
26-29 June 2000 the representative of Kenya said that: “It was difficult to explain to people in the developing world that their
representatives were involved in negotiations in the WTO concerning additional protection for wines and spirits without any
benefit being offered to developing countries.’9
In October 2001 the delegations of Bulgaria, the Czech Republic, Egypt, Iceland, India, Kenya, Liechtenstein, Pakistan,
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Slovenia, Sri Lanka, Switzerland and Turkey submitted that the extension of geographical indications to products other than
wines and spirits be formally included as an extension of the negotiating agenda. 10 This suggestion was adopted by the WTO
trade ministers in clause 18 of the Doha Ministerial Declaration adopted on 14 November 2001. 11
III. EXTENDING THE SCOPE OF SPECIAL PROTECTION TO PRODUCTS OTHER THAN WINES AND
SPIRITS
The debates in the TRIPS Council, for which African support has been sought, have addressed two matters: the legal effect of
the multilateral register and the range of products to which the multilateral register should apply. In relation to the scope of
the proposed register, it was questioned how wines and spirits received the additional protection of Article 23 of TRIPS
whereas all other products received only the general protection of Article 22. At the TRIPS Council meeting of 21 and 22
September 2000, Egypt, Kenya and Pakistan requested their delegations to be reflected as co-sponsors, as well.12 They
suggested that:
The relevant TRIPS provisions are the result of trade-offs which were specific to the circumstances prevailing at the time of
the Uruguay Round negotiations, in particular during the Brussels Ministerial Conference (1990). This was, to some extent,
due to the link at that time between the negotiations on geographical indications and the negotiations on agriculture.
There is no systematic or logical explanation for the distinction made in Section 3 of Part II of the TRIPS Agreement. This
distinction ignores that geographical indications for categories of goods other *A.J.I.C.L. 203 than wines and spirits are
equally important for trade. The economic and political significance of geographical indications is growing as increasing
quality awareness and higher quality requirements promote the demand for products of a specific geographical origin. The
added value to exported goods increases the chances for such legitimate goods to reach the market which is part of the global
vision for a multilateral trading system. That is why, since the end of the Uruguay Round, the awareness of the need for an
extension of additional protection to products other than wines and spirits has continuously increased and spread among
Members.13
The representative of Kenya associated his delegation with a proposal introduced by Switzerland 14 regarding the extension of
the higher level of protection to geographical indications for products other than wines and spirits citing its association with a
number of agreements in this field, such as the OAU Model Law15 which provided protection for a wide range of products,
including food products and handicrafts.16 He argued that “different levels of protection amounted to an unfair trade practice,
or discrimination, i.e. something that the WTO should not be seen to support.’17
At the TRIPS Council meetings of 27 to 30 November and 6 December 2000 the representative of Mauritius said that
extending the scope of Article 23 to products other than wines and spirits was a coherent step based on what was already in
the Agreement.18 She stated that her delegation did not believe and that there was no justification for a selective protection of
products, the more so as the trade value of a geographical indication was equally relevant for products other than wines and
spirits. Consequently, it felt that the higher level of protection currently granted to wines and spirits should be extended to
other products generally and that one level of protection for all products would certainly provide greater predictability for
trade in these products. She wanted to point out, though, that a country like hers was asked in the areas of agriculture and
services to liberalise and its response was that it did not think that it could actually do so in such a simple manner, because it
did not have the competitive capacity to survive in a liberalised world. Realising that it had one or two geographical
indications, which could provide it with a niche market for one or two small products, it was participating in the present
debate in the hope that, maybe after all, it could get some opportunities out of it.
*A.J.I.C.L. 204 IV. OPPOSITION TO EXTENSION
On 29 June 2001, a joint communication was sent to the TRIPS Council by Argentina, Australia, Canada, Chile, Guatemala,
New Zealand, Paraguay and the United States (Joint Communication) 19 arguing that the advantages of Article 23 protection
were overstated and that the proposals for the extension of the TRIPS wines and spirits provisions to all products had
insufficiently addressed the costs and burdens of this extension. It stated that “[t]hese new costs and burdens include
administration costs, trade implications for producers, increased potential for consumer confusion, potential producer
conflicts within the WTO Members and a heightened risk of WTO disputes.’20
Commenting on the Joint Communication at the meetings of the TRIPS Council on 18 to 22 June 2001, the representative of
Mauritius expressed her agreement that the implementation of the Uruguay Round agreements as a whole was costly, but that
[t]here was no reason why an extension of additional protection should be much more expensive than the existing additional
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protection for wines and spirits.21 At the TRIPS Council meeting of 19-20 September 2001 the representative of Kenya
pointed out that the additional cost of extension should not be a major issue as developing countries were facing considerable
costs in implementing the TRIPS Agreement.22 Small additional costs resulting from extension would be offset by the
benefits that accrue from it. He said that “especially for Members from the developing world, geographical indications in the
areas of agriculture, handicraft and foodstuffs were a mainstay in their economy and trade.’23
A joint communication from a group of countries, including Kenya and Nigeria, 24 suggested that the concerns of the USA and
the other proponents of the Joint Communication of 29 June 2001 were unfounded. The representative of Switzerland had
pointed out that the additional protection of Article 23.1 would not create the obligation for Members to create a new, costly
and burdensome regime as Members already had to provide protection for GIs under Articles 22 and 23. 25
The opposition to extension has been depicted as a struggle between the “Old World’ and the “New World’. The signatories
of the joint communication included a number of New World countries whose immigrant settlers were considered to have
appropriated the geographical indications of their Old World home countries either as nostalgic mementoes of their history or
as a pragmatic attempt to take advantage of profitable Old World markets. Principal among these were *A.J.I.C.L. 205 the
European wine indications26 which were being used by wine producers in Argentina, Australia, Chile, Paraguay and the USA.
In February 2003, the EC had proposed to the WTO’s Committee on Agriculture that it “claw back’ certain geographical
indications which were being “used by producers other than the right-holders in the country of origin’.27 As a follow-up to
this proposal, in September 2003 a preliminary list of products (wines, spirits, cheeses and ham) which fell into this category
was notified to the Committee.28 The response of the USA was that a number of the designations for food products had
become generic because European émigrés used these terms to identify the goods which they produced in their new homes.29
V. MULTILATERAL REGISTER
In June 2005 the EC submitted a proposal to amend the TRIPS Agreement to provide global protection for geographical
indications in a multilateral system of registration.30 This proposal sought to bring international protection for GIs into
conformity with the European Union where a Community-wide system for their registration is considered an indispensable
part of agricultural policy, serving both to preserve the incomes of small to medium-size producers and to guarantee the
sustainability of the rural economy. Given the fact that the EU then possessed over 700 registered geographical indications, 31
a sophisticated institutional infrastructure and technical prowess, it was exceptionally well placed to leverage the benefits of
an expanded international system of geographical *A.J.I.C.L. 206 indications protection. The EC submission set out
provisions for a centralised register that would be compulsory and have binding legal effect. 32
Opponents of the EC proposal were the New World countries: Australia, Argentina, Australia, Canada, Chile, Ecuador, El
Salvador, New Zealand and the USA who sought to enlist the support of African and other countries in arguing that such a
drastic development would only serve to undermine future gains in market access for non-European food and agricultural
products.33 The opponents advocated a system of voluntary notification and registration with no obligation to protect
registered GIs. A revised Communication from these countries, together with South Africa, proposed that the TRIPS Council
should set up a voluntary system where notified geographical indications would be registered in a database.34 Those
governments choosing to participate in the system would have to consult the database when taking decisions on protection in
their own countries. Non-participating members would be “encouraged’ but “not obliged’ to consult the database. 35
Hong Kong, China proposed a compromise under which a registered term would enjoy a more limited “presumption’ than
under the EU proposal, and only in those countries choosing to participate in the system. 36
In July 2008, a group of WTO members called for a “procedural decision’ to negotiate three intellectual property issues in
parallel: these two geographical indications issues and a proposal to require patent applicants to disclose the origin of genetic
resources or traditional knowledge used in their inventions.37 In relation to the GIs Register the proposed text was that:
1. Members agree to establish a register open to geographical indications for wines and spirits protected by any of the WTO
Members as per TRIPS. Following receipt of a notification of a geographical indication, the WTO Secretariat shall register
the notified geographical indication on the register. The elements of the notification will be agreed.
2. Each WTO Member shall provide that domestic authorities will consult the Register and take its information into account
when making decisions regarding registration and protection of trademark *A.J.I.C.L. 207 and geographical indications in
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accordance with its domestic procedures. In the framework of these procedures, and in the absence of proof to the contrary in
the course of these, the Register shall be considered as a prima facie evidence that, in that Member, the registered
geographical indication meets the definition of “geographical indication’ laid down in TRIPS Article 22.1. In the framework
of these procedures, domestic authorities shall consider assertions on the genericness exception laid down in TRIPS Article
24.6 only if these are substantiated.38
In relation to GI-Extension the proposed text was that:
7. Members agree to the extension of the protection of Article 23 of the TRIPS Agreement to geographical indications for all
products, including the extension of the Register.
8. Text-based negotiations shall be undertaken, in Special Sessions of the TRIPS Council and as an integral part of the Single
Undertaking, to amend the TRIPS Agreement in order to extend the protection of Article 23 of the TRIPS Agreement to
geographical indications for all products as well as to apply to these the exceptions provided in Article 24 of the TRIPS
Agreement mutatis mutandis.
Under the Chairmanship of Ambassador Trevor C. Clarke (Barbados) during 2008-9, the Special Session of the TRIPS
Council considered the various proposals which had been made and the Chairman identified as “crucial’ the two issues of
participation and consequences/legal effects of registration. 39 With respect to the issue of whether participation in the system
should be voluntary or mandatory, some WTO Members interpreted the reference in the mandate concerning “a multilateral
system’ to mean that the system should apply to all Members. Other Members argued that the words “those Members
participating in the system’ mean that not all Members are expected to participate. In order to advance the negotiations,
Ambassador Clarke suggested the following “Guiding Principles’:
(i) The purpose of the Register is to facilitate, not to increase, the protection of GIs for wines and spirits.
(ii) The Register should be useful and meaningful to both notifying Members and consulting Members.
(iii) The territorial nature of intellectual property rights should be preserved.
(iv) The Register should not impose undue financial and administrative burdens on Members.
*A.J.I.C.L. 208 (v) Special and differential treatment should be precise, effective and operational. 40
Ambassador Clarke’s successor as Chairman of the Special Session of the Council for TRIPS, Ambassador Darlington
Mwape (Zambia), announced, upon assuming this office, that the specific negotiating mandate of the Special Session was
limited to the negotiation of a Multilateral Register of GIs for wines and spirits. 41 He has strenuously resisted any calls for the
extension of the Multilateral Register to products other than wines and spirits. In his report to the Trade Negotiations
Committee (TNC) of 22 March 2011 he reiterated that “the specific negotiating mandate of the Special Session is limited to
the negotiations of a Register of GIs for wines and spirits, and other TRIPS-related issues are being handled in another
context and at a different level.’42 A draft composite text was circulated on 20 April 2011. 43 Ambassador Mwape reported that
despite the fact that this text reflected the current state of negotiations, views differ on “whether and how the negotiating
mandate should be accurately reflected in the Draft Composite Text’. 44 He explained that:
I have made strenuous attempts to resolve this and have offered to use my prerogative as Chair to improve textual compliance
with the Special Session of the Council for TRIPS mandate. However, Members have been unable to engage constructively
on this question and have instead insisted that the purely bottom-up and Member-driven nature of the text be scrupulously
respected at this time.45
The failure of the negotiations on the issues of extension and the multilateral register reflected the Old World/New World
positions of the protagonists. Some indication of the depth of hostility between the competing parties is reflected in the next
section of this article.
VI. THE WAR ON TERROIR 46
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The original French legislation concerning the appellations of its wines was said to be predicated on the notion of terroir,
suggesting a unique relationship between land and product quality.47 Transatlantic sceptics have questioned whether the
*A.J.I.C.L. 209 claims for the uniqueness of terroir are credible. Hughes refers to a range of between ten and sixty soil types
for the AOC Alsace grand cru and that even within the tiny Le Minervois AOC there are four regions that are differentiated
from each other by their terroir and their climate.48
US law does not recognise geographical indications as a separate class of intellectual property. Geographical designations are
done mainly through certification marks established under the Lanham Trade Mark Act 1949. A certification mark is a word,
name, symbol or device used by someone other than the owner (usually a government body) which conforms to
specifications laid down by the owner. The specifications may stipulate the place of origin as well as the methods of
production. The differences between the US and EU approaches to the protection of geographical indications has led to the
situation where EU geographical indications can secure protection as certification marks in the US, but US geographical
marks are not given protection in the EU and US trademark such as “Budweiser’ which has no geographical connotation in
the US, were trumped in Europe by geographical indications such as “Budweis’, a town in the Czech Republic. 49 The US
complained to the WTO that “foreign persons wishing to obtain protection for their geographical indications in the EU itself
face a non-transparent process that appears to come into some conflict with the EU’s TRIPS obligations’ and that “EU
rulemaking processes are often perceived by third countries as exclusionary, allowing no meaningful opportunity for non-EU
parties to influence the outcome of regulatory decisions’. 50
Actions by EU wine producers were brought in other New World countries 51 such as Australia where the importation and sale
of “Spanish Champagne’52 and “Lambrusco’ wine53 were unsuccessfully challenged.
This skirmishing broke out into open warfare when on 18 August 2003, the US and Australia requested the establishment of a
WTO dispute settlement panel to review the consistency of the EC Council Regulation (EEC) No. 2081/92 of *A.J.I.C.L.
210 14 July 1992 on the protection of geographical indications and designations of origin for agricultural products and
foodstuffs with the rules of the TRIPS and GATT Agreements. The US and Australia argued that the EC Regulation was
discriminatory and in violation of the national treatment obligations and the most-favoured-nation obligations in Articles 3
and 4 of the TRIPS Agreement and Articles I and III of the General Agreement on Tariffs and Trade 1994. The US and
Australia argued that: (i) Regulation 2081/92 did not provide the same treatment to other nationals and products originating
outside the EC that it provided to the EC’s own nationals and products; (ii) the EU did not accord immediately and
unconditionally to the nationals and products of each WTO Member any advantage, favour, privilege or immunity granted to
the nationals and products of other WTO Members; (iii) the EU diminished the legal protection for trademarks; (iv) the EU
did not provide legal means for interested parties to prevent the misleading use of a geographical indication; (v) it did not
define a geographical indication in a manner that was consistent with the definition provided in the TRIPS Agreement; (vi)
the EU was not sufficiently transparent in its registration procedures; and (vii) did not provide adequate enforcement
procedures.
The USA and Australia claimed that the EU Regulations imposed two requirements which contravened the national treatment
principle contained in Article 2(2) of the Paris Convention as incorporated by Article 2.1 of the TRIPS Agreement: (i) the
requirement that enterprises seeking to register GIs possessed a commercial establishment in the EU; and (ii) the requirement
that GIs located in the territory of a WTO Member outside the EU could only be registered if that Member had adopted a
system for GI protection that was equivalent to that in the European Communities and provided reciprocal protection to
products from the European Communities.
The Panel Report in the dispute was adopted at a meeting of the Dispute Settlement Body on 20 April 2005. Concerning the
discriminatory conditions regarding the registration of foreign GIs and the requirement for reciprocity of protection, the Panel
decided in favour of the US and Australia. Pursuant to Article 19.1 of the DSU, the Panel recommended that:
1. The European Communities should bring the Regulation into conformity with the TRIPS Agreement and GATT 1994.
2. The European Communities should implement the above recommendation by amending the Regulation so as to eliminate
the application of the equivalence and reciprocity conditions to GIs located in other WTO Members.
On the critical issue of whether the nationals of other WTO Members were accorded less favourable treatment than the
European Communities’ own nationals, the Panel ruled that the conditions in the Regulations modified the effective equality
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of opportunities to obtain protection with respect to intellectual property in two ways. First, geographical indications
protection was not available in respect of geographical areas located in third countries which the Commission had not
recognised. It was confirmed that the European Commission had not *A.J.I.C.L. 211 recognised any third countries. Second,
geographical indications protection under the Regulation could become available if the third country in which the
geographical indications are located entered into an international agreement with the EU. For the Panel, both of those
requirements represented a significant “extra hurdle’ in obtaining geographical indications protection which did not apply to
geographical areas located in the European Communities. The significance of the hurdle was taken to reflect the fact that
currently no third country had entered into such an agreement or satisfied those conditions. 54 Accordingly, the Panel found
that the equivalence and reciprocity conditions modified the effective equality of opportunities with respect to the availability
of protection to persons wishing to obtain geographical indications protection under the EU legislation, to the detriment of
those wishing to obtain protection in respect of geographical areas located in third countries, including WTO Members. This
was held to be less favourable treatment.55
The Panel noted that while the Regulation did not prevent a foreign national from producing goods within the territory of the
European Communities, the different procedures which applied to foreign nationals compared with those of the EU, were
perceived as disadvantageous to the nationals of other Members.
In response to the adverse panel finding the EU repealed Council Regulation 2081/92, which was replaced by Council
Regulation (EC) No. 509/2006 of 20 March 2006 on agricultural products and foodstuffs as traditional specialities
guaranteed56 (Council Regulation (EC) No. 510/2006 of 20 March 2006). 57
As a means of bringing disputation on wine names with the US and Australia to an end bilateral wine agreements were
negotiated by the EU with both countries.58
VII. THE STRUGGLE FOR AFRICAN HEARTS AND MINDS
The negotiating impasse between the New World and Old World protagonists in the WTO has led the EU to seek allies for its
position among the African countries. The TRIPS agreement does not prescribe the way in which the geographical
indications obligations should be implemented. Generally, those African countries with a French colonial heritage have
adopted sui generis geographical indications legislation along the lines of EU laws, which reflect the French approach to the
sui generis protection of geographical indications. These countries include: Algeria, Morocco and Tunisia and the Member
States of the Francophone Organisation Africaine de la Propriété Intellectuelle (OAPI), comprising: Benin, Burkina Faso,
Cameroon, Central African Republic, Chad, Congo, Côte d’Ivoire, Equatorial *A.J.I.C.L. 212 Guinea, Gabon, Guinea,
Guinea-Bissau, Mali, Mauritania, Niger, Senegal and Togo. The OAPI Agreement embodies the national IPR laws of the
Member States and therefore, applies directly in each Member State. Annex VI of the Bangui Agreement 1977, which
established OAPI, provides for the registration and protection of geographical indications, which is undertaken by OAPI on
behalf of its Member States.
French institutions such as INAO (Institut national de l’origine et de la qualité) which has the primary responsibility for
regulating national geographical indications have been active in promoting the French/EU approach to geographical
indication protection in Africa, Between 2002 and 2004, INAO worked with four Francophone African countries to help
them to identify products which were suitable for protection as geographical indications. These were: Burkina Faso (harico
vert and karité); Cameroon (manioc, canne à sucre, igname); Côte d’Ivoire (riz de Man, toiles de Korhogo); Guinée (ananas
de Mafèrinyah, banane naine).59
Through a cooperation agreement between the INAO and OAPI the following products were to be developed as geographical
indications: Oku white honey and njombe pepper from Cameroon; Atcheke of Grand Lahou and the Khorogho garment from
Côte d’Ivoire; Diama coffee and the Mafeya pineapple from Guinea; and Massina Kwite butter and the Souflou green beans
from Burkina Faso.60
A workshop organised by INAO with the support of OAPI and held in Montpellier from 24 to 27 March 2009 identified the
potential for geographical indications protection of shea butter from Burkina Faso, shallots from the Dogon area of Mali,
Rooibos tea from South Africa, argan oil from Morocco, Galmi onions from Niger, Fouta Djalon potatoes from Guinea and
Madagascar vanilla.
In addition to French activity in Africa, the European Union has interested itself in the geographical indications situation in
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Africa. A survey commissioned by the Trade Directorate General in 2007 reported that “in a number of African countries
products with geographical names are known for their specific qualities and reputation but the geographical names are not
registered or protected.’61 The report identified a number of Kenyan products as suitable for GI protection: Mt Kenya coffee,
Gathuthi tea, Kisii tea, Kericho tea, Kangeta, Miraa, Meru potato, Kikuyu grass, Mombasa mango, Machakos honey,
Naivasha wine, Machakos mango, Asembo mango, Kakamega papaya, Muranga bananas and Kisii bananas, Molo lamb,
Kitengela ostrich meat, Omena fish and Mursik milk. Other GI products are Keringeti mineral water and Victoria mineral
water, Kakamega omukombera, Tilapia fish from Lake Victoria and Lake Turkana, minerals such as Tsavonite and Magadi
soda as well as industrial products such as the Kenyan kiondo, while *A.J.I.C.L. 213 handicrafts would include Kisii
soapstone, Akamba carvings, Maasai attire and beads.62
Examples from other African countries mentioned in the report as products having unique geographical attributes were: Shea
butter and Bobo for plank masks from Burkina Faso; Ambriz coffee, Encoge coffee, Cazengo coffee from Angola;
high-grade cotton from Chad; kivu and Ituri for coffee from Congo; Zimbabwe tobacco and chipinga coffe; Uganda Waragi;
Tanzania Konyagi and Kilimanjaro coffee; sweet potato from Gabon; white honey from Cameroon; Korhogo fabrics from
Côte d’Ivoire; fish from Lake Kivu, Rwanda passion fruit, Rwanda tea, Rwanda coffee from Rwanda; pineapples from
Guinea; the Mananara vanilla, Madagascar for pepper, vanilla, shrimps, Ambositra handicraft, Antananarivo handicraft from
Madagascar; plus chilies and pickles from Rodriques Island of Mauritius.63
The focus on Kenya was significant as this was the first Anglophone, common law country identified as suitable for
recruitment to the geographical indications cause. It will be recalled that Kenya on behalf of the African Group endorsed this
Turkish proposal prior to the Seattle WTO Ministerial in 1999 that the special protection in Article 23 of TRIPS for GIs for
wines and spirits be extended to other products.64 In the subsequent negotiations in the TRIPS Council, Kenya had joined
with a number of like-minded countries in an informal group - “Friends of GIs’ - to “get a clear mandate confirming
negotiations on extension as part of single undertaking of the Doha Round’. 65
At a WTO Round Table on the protection of geographical indications from an African perspective, held in May 2004, it was
reported that “the Kenyan Government and producers of geographical indications have been in the forefront in championing
the call for a better protection of the geographical indication products’ and that having realised the “need to create awareness
among African producers, the Kenya government in cooperation with the European Commission had taken a leading role in
organising an African Region Seminar on intellectual property protection for geographical indications to sensitise the public
and potential GI producers.’66 The seminar was held in December 2004 in Mombasa, Kenya and hosted by the Kenya
Industrial Property Institute (KIPI).
Professor James Otieno-Odek, the Managing Director of KIPI, was a strong supporter of the introduction of geographical
indications protection for Kenya. He published a book on the protection of geographical indications in Kenya 67 and was
*A.J.I.C.L. 214 the speaker on this subject at a WIPO High Level Forum on IP Policy and Strategy in Tokyo in 2005 68 and at
a Worldwide Symposium on Geographical Indications in Parma in the same year in which he strongly urged African
countries to support the multilateral register and the extension of the scope of Article 23 of TRIPS to agricultural products
and handicrafts.69 As Managing Director of KIPI, in December 2007 Professor Odek was the signatory to an agreement
between KIPI and the Swiss Institute of Intellectual Property (IPI) for a Swiss-Kenyan Project on Geographical Indications
(SKGI)70 which supported the establishment of a functioning geographical indications protection system in Kenya and to
support the country in raising awareness on GIs within East African Community member states. 71 The project commenced in
2009 and a pilot study identified products for possible protection, but the project was terminated in December 2010 as Kenya
had not promulgated its geographical indications legislation.
The drafting of a geographical indications Bill had commenced in 2001 and Draft Instructions for the bill were prepared in
2001 by KIPI and forwarded to the Attorney General’s Office for consideration. In 2007 the Draft Instructions were referred
back to KIPI for further consultations with stakeholders in order to incorporate changes that might have been necessitated by
the passage of time. A new Bill with associated Drafting Instructions was published in 2009 72 and the comments of KIPI were
communicated to the Attorney General’s Department. These comments were considered by the Attorney General’s
Department which on 17 December 2010 issued the Geographical Indications Bill 2010. In April 2012 the Kenya Business
Daily reported that the Industrialisation Ministry along with KIPI “are currently reviewing the Geographical Indications
Bill’.73
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This delay may be explained in part by the departure of Professor Odek from KIPI, as well as the inevitably crowded
legislative agenda of the Kenyan government, but it may also be explained by the difficulty of a common law country to
come to terms with sui generis geographical indications protection.
Pursuant to the Cotonou Agreement (partnership agreement between the members of the African, Caribbean and Pacific
Group of states and the EU *A.J.I.C.L. 215 signed on 23 June 2000) a number of Economic Partnership Agreements (EPAs)
have been entered into between the EU and Cotonou signatories. In the draft proposals with the Economic Community of
West African States (ECOWAS)74 and Southern African Development Community (SADC)75 member states, substantive
obligations are proposed in the areas of trademarks and geographical indications. Côte d’Ivoire and Ghana have signed
provisional EPAs containing these obligations.
Under the Cotonou Agreement the EU has been engaged in a number of activities to promote the potential of geographical
indications for ACP member states. A conference in Douala, Cameroon in April 2010 reported on the potential of Penja
white pepper, Cameroon (poivre blanc du Penja), onions from Dogon, Mali (echalote du Pays Dogon), attiéké from
Grand-Lahou, Côte d’Ivoire and Korhogo cloth, Côte d’Ivoire as well as products of Argan trees in Morocco as suitable
products.76 Also, as part of the ACP-EU programme, a report was commissioned on potential GIs in Côte d’Ivoire.77 This
report considered the geographical indications possibilities for: cashew nuts, attiéké of Grand-Lahou, Fakaha cloth (toiles de
Fakaha) and the Kent mango of Côte d’Ivoire, as well as the para rubber tree of Grand Boudoury, Katiola pottery, Tiebissou
cloth, cocoa, the kponan yam of Bondoukou, savannah cotton and mountain rice.
A more overt example of the EU attempt to secure African support for its conception of geographical indications protection
was the 2011 ACP-EU project: “The Protection of Geographical Indications (GI): Generating Empirical Evidence at Country
and Product Level to Support African ACP Country Engagement in the Doha Round Negotiations’. 78 The overall objective of
the project was to generate empirical evidence, based on country/sub-regional and product case studies, regarding the benefits
that African members of the ACP Group could obtain from enhanced multilateral geographical indications protection.
Among the specific objectives of the project are: (1) an assessment of “the suitability of existing international geographical
indications protection regimes for the effective protection of African geographical indications and provision of *A.J.I.C.L.
216 recommendations for needed changes; (2) “recommendations on the optimum international framework to enable African
countries to capture value out of geographical indications’.
It was envisaged that the methodology of the project would be replicable in other African, Caribbean and Pacific regions to
support the identification and development of geographical indications.
The project looked at products in a range of Anglophone and Francophone countries in East and West and Central Africa.
Specific countries and products studied were: Cameroon - Oku white honey; Gabon - Okoumé timber; Ghana - cocoa; Kenya
- black tea; Mauritius - Demerara sugar; Nigeria - yams; Rwanda - coffee; Senegal - yêtt de Joal (dried snails); Tanzania cloves.
As the title of the project indicated its purpose was to generate empirical evidence at country and product level to support
African engagement in the Doha Round WTO negotiations on the multilateral register and extension.
Following up on this project in October 2013 the EU organised a workshop on the “Protection and Registration of
Geographical Indications (GIs): Development and Use of Specific Instruments to Market Origin-Based Agricultural Products,
Making Particular Use of GIs in African ACP Countries’. 79 This meeting was also aimed at building capacity among
administration and stakeholders for the development of a common geographical indications protection system to be applied in
18 African countries.80
VIII. THE EMPIRE STRIKES BACK-WIPO AND THE REVIVAL OF THE LISBON AGREEMENT
Until the the TRIPS Agreement, the administration of international intellectual property was the province of WIPO, which in
its original incarnation was a Swiss government agency BIRPI (Bureaux Internationaux Réunis pour la Protection de la
Propriété Intellectuelle) established in 1886 to administer the Paris Convention on Industrial Property and the Berne
Convention for the Protection of Literary and Artistic Works. The subject of intellectual property was considered to be too
important to be left under the administration of Switzerland and in 1970 BIRPI was replaced by WIPO, which was
constituted as a specialised agency of the United Nations Organisation.81 WIPO was responsible for the administration of
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some 18 treaties and conventions, including the Lisbon Agreement for the Protection of Appellations of Origin and Their
Registration 1958. From the late 1970s there was a growing realisation, particularly in the USA, that the counterfeiting of
trade-marked products was having a considerable adverse impact upon its trade revenues. In the absence of enforcement
powers, WIPO was considered *A.J.I.C.L. 217 inadequate to the task of dealing with this issue and the USA began to
consider the GATT as a more effective alternative as it had a Disputes Settlement Mechanism and the potential sanction of
withdrawing tariff preferences from infringing countries.
In 1982 the USA carried forward into the preparatory ministerial meeting for the forthcoming GATT Round a proposal for an
anti-counterfeiting code.82 The Ministerial Declaration of 29 November 1982 asked the GATT Council:
to examine the question of counterfeit goods with a view to determining the appropriateness of joint action in the GATT
framework on the trade aspects of commercial counterfeiting and, if such joint action is found to be appropriate, the
modalities for such action, having full regard to the competence of other international organisations. For the purposes of such
examination, the CONTRACTING PARTIES request the Director-General to hold consultations with the Director-General of
WIPO in order to clarify the legal and institutional aspects involved.83
In May 1983 the Director General of GATT held consultations with Dr Arpad Bogsch, the WIPO Director General. 84 WIPO
was apparently unreceptive to the joint sponsorship of the Code and “the Director-General of WIPO was reported as stating
that he had “no mandate to commit WIPO to the drafting of any such Code”’. 85
The significant feature of the TRIPS Agreement was that it contained a wide range of enforcement provisions86 and
established the WTO as the major rival to WIPO in the international intellectual property space.
The failure of the WTO negotiations on geographical indications has provided WIPO with an opportunity to re-establish its
relevance to international intellectual property. It has revisited the failed Lisbon Agreement to make it attractive for countries
wishing to enact geographical indications legislation to discharge their TRIPS obligations. 87 As the EU has done with
securing the support of African adherents to its WTO negotiating position, WIPO has conducted a number of projects in
Africa to demonstrate the value and utility of geographical *A.J.I.C.L. 218 indications. It has commissioned studies of
Burundi tea and coffee,88 Gambian cashews,89 Ugandan cotton,90 Sudanese gum arabic91 and Ugandan vanilla.92 Under its
development cooperation programme for Africa WIPO has conducted intellectual property needs assessments in Burundi,
Cameroon, The Gambia, Liberia, Mauritius, Rwanda, Seychelles, Uganda, Tanzania and Zanzibar.93 These assessments have
identified the requirement for sui generis geographical indications laws and such laws have been drafted for Zimbabwe
(2001), Mauritius (2002), Ghana (2003), Kenya (2009), Rwanda (2009) and Uganda (2013).
To date none of these laws have been implemented, probably because capacity has to be built in these countries whose
intellectual property laws derive largely from common law roots.
IX. ETHIOPIA-SURVIVOR OF THE SCRAMBLE
Ethiopia (Abyssinia) has a proud history of having survived the “Scramble for Africa’ by successfully resisting colonisation.
In the area of geographical indications protection it has also charted an independent route.
Ethiopia was concerned to protect its fine coffees: Harar/Harrar, Yirgacheffee and Sidamo, each representing a distinct aroma
and flavour.94 Foreign coffee distributors had marketed these coffees as Harar/Harrar, Yirgacheffee and Sidamo together with
their brands depriving Ethiopian coffee growers of the premium prices which could be obtained from their fine coffees. In
order to address these problems, Ethiopia with technical, legal and financial support from Light Years IP, a US-based
not-for-profit organisation, Arnold & Porter, a US law firm and the UK Department for International Development
respectively embarked upon a programme known as the Ethiopian Fine Coffee Designations Trade Marking *A.J.I.C.L. 219
and Licensing Initiative in 2004.95 Applications for trademark registration of the three coffee designations: Harar/Harrar,
Sidamo and Yirgacheffee were made in Australia, Brazil, Canada, China, India, Japan, the European Union, Saudi Arabia,
South Africa and the USA by the Ethiopian Intellectual Property Office (EIPO). In the majority of the countries, the
trademark applications were accepted and trademark registrations have been secured.
The registrations ran into problems in Australia and the USA on the ground that the designations were names of geographical
places and lacked distinctiveness as trademarks. In the USA, the United States Patent and Trademark Office (USPTO)
approved the application to register “Yirgacheffe’, but the National Coffee Association (NCA), representing coffee roasters
of the United States, objected to the applications for “Harrar’ and “Sidamo’ on the ground that the names had become generic
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descriptions of coffee and as such were not eligible for registration under the United States trademark law. The USPTO
turned down the application for “Harrar’ in 2005 and for “Sidamo’ in 2006. 96
The American coffee chain Starbucks Coffee Corporation, which was widely reported in the media to have been a driving
force behind the NCA objection, offered to assist the EIPO in setting up a national system of certification marks to enable the
farmers to protect and market their coffee as “robust’ geographical indications. 97 The EIPO responded with the concern that
95 per cent of its coffee was grown by two million subsistence-level farmers and that setting up a certification system would
have been impracticable and too expensive.98
The EIPO filed rebuttals against the USPTO decisions with supporting evidence to demonstrate that the terms Harrar and
Sidamo had acquired distinctiveness. Meanwhile, both Starbucks and the Ethiopian government were keen to resolve their
differences and find a flexible way forward. Their joint efforts led to an announcement in 2007 that they had reached a
mutually satisfactory agreement regarding the distribution, marketing and licensing of Ethiopia’s specialty coffee
designations, which provided a framework for cooperation to promote recognition of Harrar, Sidamo and Yirgacheffe. 99
Starbucks agreed to sign voluntary trademark licensing agreements which immediately acknowledge Ethiopia’s ownership of
the Harrar, Sidamo and Yirgacheffe names, regardless of whether or not a trademark registration has been granted. In August
2006, the USPTO informed the EIPO that their rebuttal in the *A.J.I.C.L. 220 case of Harar/Harrar had been successful.
(Harar was registered on 1 July 2008 and Harrar was registered on 3 June 2008.) A trademark for Sidamo was also granted in
February 2008.
The Ethiopian trademark experience and its coffee Licensing Initiative is cited as “credible evidence that a developing nation
can claim its place in the world marketplace as well as claim ownership of its culture, heritage … without claiming a GI’,
calling into doubt “the EU’s assertion that stronger GI protection will benefit developing nations’.100
Getachew Mengistie is an intellectual property consultant and former head of the Ethiopian Intellectual Property Office
Michael Blakeney is Winthrop Professor, University of Western Australia, and Visiting Professor in Intellectual Property and
Agriculture at Queen Mary University of London.
Footnotes
1
For a comprehensive account of the negotiating history of the Round see Daniel Gervais, The TRIPS
Agreement: Drafting History and Analysis, 2nd edn (Sweet & Maxwell, 2003), p. 94.
2
Reproduced in Terence P. Stewart (ed.), The GATT Uruguay Round. A Negotiating History (1986-1992),
Vols I-III (Kluwer, 1993), pp. 11-25.
3
Guidelines Proposed by the European Community for the Negotiations on Trade Related Aspects of
Intellectual Property Rights, GATT Doc. No. MTN.GNG/NG11/W/17 (20 November 1987).
4
See L. Lacour, Les fausses indications de provenance (Rousseau, 1904); M. Plaisant and F. Jacq, Traité des
noms et appellations d’origine (Rousseau, 1921); L. Jaton, La Répression des fausses Indications de
Provenance et les Conventions Internationales (Librairie Générale de Droit et de Jurisprudence, 1926);
J.-M. Auby and R. Plaisant, Le droit des appellations d’origine: l’appellation Cognac (Librairies
techniques,1974); J. Guyet, Les indications de provenance et appellations d’origine et droit comparé
(Librarie Droz, 1983); A. de Vletian, Appellations d’origine-Indications de provenance-Indications
d’origine (Delmas, 1989); D. Denis, Appellation d’origine et indications de provenance (Dalloz, 1995); N.
Olszak, Droit des appellations d’origine et indications de provenence (Tec&Doc, Paris, 2001); D. Rochard,
La protection internationale des indications géographiques (Presses Universitaires de France, 2002).
5
Daniel Gervais, “Traditional Innovation and the Ongoing Debate on the Protection of Geographical
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Indications’, in Peter Drahos and Susy Frankel (eds), Indigenous Peoples’ Innovation. Intellectual Property
Pathways to Development (ANU, 2012), p. 125.
6
As at 26 April 2015, 161 members (online at
https://www.wto.org/english/thewto_e/whatis_e/tif_e/org6_e.htm (accessed 23 August 2015)).
7
WTO Doc. No. WT/GC/W/249, 13 July 1999.
8
Preparations for the 1999 Ministerial Conference the TRIPS Agreement Communication from Kenya on
Behalf of the African Group, WTO Doc. WT/GC/W/302, 6 August 1999.
9
WTO Doc. IP/C/M/27, para. 77, 14 August 2000.
10
WTO Doc. IP/C/W/204/Rev.1, 2 October 2000.
11
”With a view to completing the work started in the Council for Trade-Related Aspects of Intellectual
Property Rights (Council for TRIPS) on the implementation of Article 23.4, we agree to negotiate the
establishment of a multilateral system of notification and registration of geographical indications for wines
and spirits by the Fifth Session of the Ministerial Conference. We note that issues related to the extension
of the protection of geographical indications provided for in Article 23 to products other than wines and
spirits will be addressed in the Council for TRIPS pursuant to paragraph 12 of this declaration.’ WTO Doc.
WT/MIN(01)/DEC/1, 20 November 2001.
12
IP/C/W/204/Rev.1, 2 October 2000.
13
Ibid., at paras 6-7.
14
P/C/W/204/Rev.1, para. 76, 2 October 2000.
15
Organization of African Unity (OAU), African Model Legislation for the Protection of the Rights of Local
Communities, Farmers and Breeders, and for the Regulation of Access to Biological Resources, 2000,
available at http://www.wipo.int/wipolex/en/text.jsp?file_id=252153 (accessed 29 August 2015).
16
Minutes of Meeting of the TRIPS Council, 2 to 5 April 2001, WTO Doc., IP/C/M/30, para. 92, 1 June
2001.
17
Ibid.
18
IP/C/M/29, para. 103, 6 March 2001.
19
WTO Doc. IP/C/W/289.
20
Ibid., Attachment at para. 13.
21
IP/C/M/32, at para. 112, 23 August 2001.
22
WTO Doc, IP/C/M/33, para. 75, 2 November 2001.
23
Ibid.
24
The other proponents were the delegations of Bulgaria, Cuba, the Czech Republic, Georgia, Hungary,
Iceland, India, the Kyrgyz Republic, Liechtenstein, Moldova, Pakistan, Slovenia, Sri Lanka, Switzerland
and Turkey (WTO Doc. IP/C/W/308, 2 October 2001).
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25
WTO Doc., IP/C/M/33, para. 75, 2 November 2001.
26
Such as: Beaujolais, Burgundy, Cava, Chablis, Champagne, Chianti, Frascati, Frontignan, Graves, Hock,
Madeira, Malaga Marsala, Moselle, Port, Sancerre, Sauterne, Sherry, Saint-Emilion, Vinho Verde. See M.
Blakeney, “Geographical Indications and the International Trade in Australian Wines’, 18 International
Trade Law and Regulation (2012): 70.
27
”A Proposal for Modalities in the WTO Agriculture Negotiations, Specific Drafting Input by the EC’,
WTO Doc. JOB(03)/12 (5 February 2003).
28
WTO Doc JOB(03)/12/Add.1 (5 September 2003).
29
WTO, “TRIPS Geographical Indications: Background and the Current Situation’, available at
http://www.wto.org/english/tratop_e/TRIPs_e/gi_background_e.htm.
30
The EC proposed amending section 3 of the TRIPS Agreement with a view to extending the regime of
protection today available for geographical indications on wines and spirits to geographical indications on
all products (”extension’), and in addition a proposal for the inclusion of an annex to the TRIPS Agreement
establishing a multilateral system of notification and registration of geographical indications (GIs). World
Trade Organization, General Council, Trade Negotiations Committee, Council for Trade-Related Aspects
of Intellectual Property Rights, Special Session on Geographical Indications, Communication from the
European Communities, 14 June 2005 (WT/GC/W/547, TN/C/W/26, TN/IP/W/11). See earlier submissions
of the EC, 22 June 2000 (IP/C/W/107/Rev.1) with respect to the register, and submission of 2002 in respect
of the extension (IP/C/W/353), 24 June 2002.
31
”Since 1993, more than 700 names, designating inter alia over 150 cheeses, 160 meat and meat-based
products, 150 fresh or processed fruits or vegetables and 80 types of olive oil, have been registered in this
context. The Commission has also received over 300 further applications for the registration of names
and/or amendments to specifications from Member States and third countries.’ Proposal for a Council
Regulation on the Protection of Geographical Indications and designations of origin for agricultural
products and foodstuffs, Commission of the European Communities, Brussels (5 January 2006, para. 3).
32
Communication from the European Communities (TN/IP/W/11) of 13 June 2005. The communication was
circulated to the General Council, to the TNC and to the Special Session of the Council for TRIPS at the
request of the Delegation of the European Commission. This proposal maintained the level of ambition of
the EC as regards both “extension’ and the multilateral register of GIs, as contained in its earlier proposals
in documents IP/C/W/107/Rev. 1 (on the GI register) and IP/C/W/353 (on “extension’).
33
See Communication from Argentina, Australia, Canada, Chile, Ecuador, El Salvador, New Zealand and the
United States (TN/IP/W/9, 13 April 2004).
34
WTO Doc. TN/IP/W/10/Rev.2, 24 July 2008.
35
TN/IP/W/10/Rev.2, 24 July 2008.
36
TN/IP/W/8, 23 April 2003.
37
Communication from Albania, Brazil, China, Colombia, Ecuador, the European Communities, Iceland,
India, Indonesia, the Kyrgyz Republic, Liechtenstein, the Former Yugoslav Republic of Macedonia,
Pakistan, Peru, Sri Lanka, Switzerland, Thailand, Turkey, the ACP Group and the African Group
(TN/C/W/52 of 19 July 2008).
38
Ibid.
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39
Multilateral System of Notification and Registration of Geographical Indications for Wines and Spirits,
Report by the Chairman, Ambassador C. Trevor Clarke (Barbados), TN/IP/19, 25 November 2009, para.10.
40
Ibid., at para.16.
41
Multilateral System of Notification and Registration of Geographical Indications for Wines and Spirits,
Report by the Chairman, Ambassador Darlington Mwape (Zambia), TN/IP/20, 22 March 2010, para. 4.
42
Ibid., para. 5.
43
JOB/IP/3/Rev.1
44
Ibid., paras 15-17.
45
Ibid., para. 16.
46
This heading is borrowed from T. Josling, “The War on Terroir: Geographical Indications as a
Transatlantic Trade Conflict’, 57 Journal of Agricultural Economics (2006): 337.
47
See L. Bérard and P. Marchenay, (2001). “A Market Culture. “Produits de Terroir” or the selling of
heritage’, in S. Blowen, M. Demossier and J. Picard (eds), Recollections of France. Memories, Identities
and Heritage in Contemporary France (Berghahn, Contemporary France series, Vol. 4, pp. 154-67; E.
Barham, “Translating Terroir: The Global Challenge of French AOC Labelling’, 19 Journal of Rural
Studies (2003): 127-37; D. Gade, “Tradition, Territory, and Terroir in French Viniculture: Cassis, France,
and Appellation Controlée’, 94 Annals of the Association of American Geographers (2004): 848; J.-P.
Deffontaines, “The Terroir, a Concept with Multiple Meanings’, in L. Bérard, M. Cegarra, M. Djama and
S. Louafi (eds), Biodiversity and Local Ecological Knowledge in France (INRA-CIRAD, 2005), pp. 38-42.
48
J. Hughes, “Champagne, Feta, and Bourbon: the Spirited Debate about Geographical Indications’, 58
Hastings Law Journal (2006): 299, at p. 360.
49
For example, see Budéjovický Budvar v. Rudolf Ammersin GmbH [2003] ECR I-1361; Anheuser-Busch v.
Budéjovický Budvar [2004] ECR I-10989; [2005] ETMR 286.
50
WTO Trade Policy Review of the European Union, Statement by the United States to the WTO, 24 July
2002, available at https://www.wto.org/english/tratop_e/tpr_e/tp198_e.htm (accessed 24 August 2015).
51
See M. J. M. Cortes, “The WTO TRIPS Agreement - The Battle between the Old World and the New
World over the Protection of Geographical Indications’, 7 Journal of World Intellectual Property (2004):
287.
52
Re Comité Interprofessionel Du Vin De Champagne and Charles Barker Australia Pty Ltd v. N. L. Burton
Pty Ltd t/a Freixenet Spanish Champagne Distributors and Garland Farwagi & Partners Pty Ltd [1981]
FCA 196; (1981) 57 FLR 434.
53
Re Gavioli Luigi & Figli SNC and European Foods Wholesalers Pty Ltd v. G. J. Coles & Co. Pty Ltd and
Orifici Holdings Pty Ltd [1983] FCA 353; (1983) 74 FLR 250.
54
OJ L 93, 31 March 2006, p. 1.
55
Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on
quality schemes for agricultural products and foodstuffs, OJ L 93, 31 March 2006, pp. 12-25.
56
OJ L 93, 31 March 2006, p. 1.
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57
Regulation (EU) No. 1151/2012 of the European Parliament and of the Council of 21 November 2012 on
quality schemes for agricultural products and foodstuffs, OJ L 93, 31 March 2006, pp. 12-25.
58
US-EU Wine Accord, September 2005, available at http://www.ttb.gov/agreements/eu-wine-agreement.pdf
(accessed 24 August 2015); EU Australia agreement on trade in wine, signed on 1 December 2008, coming
into force on 1 September 2010, available at
http://eur-lex.europa.eu/LexUriServ/LexUriServ.do?uri=OJ:L:2009:028:0003:0087:EN:PDF (accessed 24
August 2015).
59
O’Connor & Co., GIs Around the World (O’Connor & Co., 2001), p. 9.
60
Sisule F. Musungu, The Protection of Geographical Indications and the Doha Round: Strategic and Policy
Considerations for Africa (QUNO, 2008): 11.
61
Bernard O’Connor and Irina Kireeva, GIs Around the World (O’Connor & Co., 2007), p. 8, available at:
http://ec.europa.eu/trade/issues/sectoral/intell_property/gi_handbook_en.htm.
62
Ibid.
63
Ibid., pp. 8-9.
64
WTO Doc. No. WT/GC/W/249, 13 July 1999.
65
See Statement by Switzerland on Behalf of the Friends of Geographical Indications, WTO, TN/C/4, 13 July
2004, and Doha Work Programme - The Extension of the Additional Protection for Geographical
Indications to Products Other Than Wines and Spirits, WTO, TN/C/W/21/Rev.1, 14 December 2004.
66
See https://www.wto.org/english/tratop_e/dda…/symp04_paper_nyaga_e.doc (accessed 25 August 2015.
67
J. Odek, Intellectual Property, Protection of Geographical Indications (GI) in Kenya and the TRIPS
Agreement (KIPI, 2005).
68
J. Odek, Intellectual Property: Protection of Geographical Indications (GI) in Kenya and the TRIPS
Agreement. Paper presented at the WIPO High Level Forum on IP Policy and Strategy, Tokyo, available
online at
https://profiles.uonbi.ac.ke/odek/publications/intellectual-property-protection-geographical-indications-gi-k
enya-and-trips-agree.
69
J. Otieno-Odek, The Way Ahead: What Future for Geographical Indications? Paper presented at
Worldwide Symposium on Geographical Indications, Parma (27-29 June 2005), online at
http://www.wipo.int/meetings/en/2005/geo_pmf/presentations/pdf/wipo_geo_pmf_05_otieno (retrieved 30
December 2008).
70
See Press Statement available at
https://www.ige.ch/fileadmin/user_upload/Juristische_Infos/e/swiss_kenyan_project_press_statement_e.pdf
(accessed 25 August 2015).
71
The East African Community (EAC) is the regional intergovernmental organisation of the Republics of
Burundi, Kenya, Rwanda, the United Republic of Tanzania and the Republic of Uganda.
72
Giorgio Bocedi, Country Paper, Kenya: Which Protection for GIs and What Potential GI Products? Paper
commissioned by the ACP-EU programme TradeCom in the frame of the ACP regional workshops on
Geographical Indications, April-May 2010, p. 9.
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73
Lynette Gitonga, Geographical Indications Bill, Kenya, available at
http://www.lynettegitonga.com/2012/04/geographical-indications-bill-kenya.html (accessed 25 August
2015).
74
ECOWAS member states are: Benin, Burkina Faso, Cabo Verde, Côte d’Ivoire, The Gambia, Ghana,
Guinea, Guinea Bissau, Liberia, Mali, Niger, Nigeria, Senegal, Sie rra Leone, Togo. See
http://www.ecowas.int/member-states/ (accessed 22 August 2015).
75
SADC member states are: Angola, Botswana, Democratic Republic of Congo (DRC), Lesotho,
Madagascar, Malawi, Mauritius, Mozambique, Namibia, Seychelles, South Africa, Swaziland, United
Republic of Tanzania, Zambia and Zimbabwe, online at http://www.sadc.int/member-states (accessed 22
August 2015).
76
Regional Seminar on the Protection of Geographical Indications (GIs) in the African Member States of the
African, Caribbean and Pacific (ACP) Group, Douala, Cameroon, 27-28 April 2010, Rapporteur’s Report,
Susan Isiko %3FStrba, Brussels, TradeCom, 2010.
77
M. Bagal and M. Vittori, Preliminary Report on the Potential for Geographical Indications in Cote
d’Ivoire and the Relevant Legal Framework. Paper commissioned by the ACP-EU programme TradeCom
in the frame of the ACP regional workshops on geographical Indications, April-May 2010, Brussels,
TradeCom, 2010.
78
Described in M. Blakeney, T. Coulet, G. Mengistie and M. Tonye Mahop (eds), Extending Protection of
Geographical Indications: Case Studies of Agricultural Products in Africa (Earthscan, 2012).
79
See http://ec.europa.eu/agriculture/events/2013/gi-workshops/uganda/press-release-uganda_en.pdf
(accessed 24 August 2015).
80
”Geographical Indications: Towards a Common Protection System in African ACP countries’, ibid.
81
See A. Ilardi and M. Blakeney, International Encyclopaedia of Intellectual Property Treaties (Oxford
University Press, 2004).
82
See A. J. Bradley, “Intellectual Property Rights, Investment and Trade in Services in the Uruguay Round:
Laying the Foundations’, 23 Stanford Journal of International Law (1987): 57.
83
L/5424 of 29 November 1982.
84
Report by Director-General on Consultations with Director General of WIPO, C/W/418 of 16 May 1983.
85
Comment, “Trade Policy: Worldwide Counterfeiting Code Progress at Standstill Due to Delaying Tactics’,
Daily Executive Report (BNA) No. 40 at L-3 (29 February 1984), quoted in D. E. Prebluda, “Countering
International Trade in Counterfeit Goods’ (1986) 12 Brooklyn Journal of International Law (1986): 339, at
p. 353.
86
See, M. Blakeney, Trade Related Aspects of Intellectual Property Rights. A Concise Guide to the TRIPs
Agreement (Sweet & Maxwell, 1996).
87
See D. J. Gervais, “Reinventing Lisbon: the Case for a Protocol to the Lisbon Agreement (Geographical
Indications)’, 11 Chicago Journal of International Law (2010): 67.
88
Getachew Mengistie, WIPO Needs Evaluation and Technical Support Relating to the IP Development Plan
Formulation for the Republic Of Burundi: Mission Report (WIPO, 2011).
© 2020 Thomson Reuters.
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Geographical indications and the scramble for Africa, A.J.I.C.L. 2017, 25(2), 199-220
89
Getachew Mengistie, WIPO Needs Evaluation and Technical Support Relating to the Formulation of a
National IP Policy for the Republic of Gambia: Mission Report (WIPO, 2012).
90
Getachew Mengiste, Fact Finding Mission to Enhance the Use of Innovative Technology, Branding and
Collective Marks to Boost Agricultural Productivity and Export Products in Uganda, WIPO Expert
Mission Report (WIPO, 2012); and Getachew Mengiste, Draft Intellectual Property Strategy and Branding
Proposal to Strengthen the Competitiveness of Ugandan Cotton and Enhance Income Made with Support of
WIPO (WIPO, 2012).
91
Getachew Mengistie, Strengthening Competitiveness and Enhancing Trade Revenue of Identified Export
Agricultural Products of Sudan Using IP & Branding Strategies: WIPO Fact Finding Mission Report
(WIPO, 2015).
92
LYIP Ugandan Vanilla: Feasibility Study (WIPO, 2009).
93
Referred to in Getachew Mengistie, Managing Geographical Indications in Africa - Opportunities,
Experiences and Challenges. Paper presented at Worldwide Symposium on Geographical Indications
organised by the World Intellectual Property Organisation (WIPO) and the Department of Intellectual
Property (DIP) of Thailand, Bangkok, 27-29 March 2013, available at
http://www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_bkk_13/wipo_geo_bkk_13_inf_4.pdf (accessed 24
August 2015).
94
See Getachew Mengistie, Intellectual Property as a Tool for Development: The Ethiopian Fine Coffee
Designations Trade Marking and Licensing Experience (WIPO, 2011).
95
Ibid.
96
See WIPO, The Coffee War: Ethiopia and the Starbucks Story ‘, available at
http://www.wipo.int/ipadvantage/en/details.jsp?id=2621 (accessed 24 August 2015).
97
Ibid.
98
Stephan Faris, “Starbucks vs. Ethiopia’, Fortune, 26 February 2007, quoted in Mary O’Kicki, “Lessons
Learned from Ethiopia’s Trade-marking and Licensing Initiative: Is the European Union’s Position on
Geographical Indications Really Beneficial for Developing Nations?’ 6 Loyola University Chicago
International Law Review (2009): 311.
99
See A. Arslan, and C. P. Reicher, “The Effects of the Coffee Trademarking Initiative and Starbucks
Publicity on Export Prices of Ethiopian Coffee’, Proceedings of the German Development Economics
Conference, Hannover, Germany, available at
https://www.econstor.eu/dspace/bitstream/10419/39959/1/288_arslan.pdf (accessed 24 August 2015).
100
”Kicki, supra, note 96, at p. 335.
© 2020 Edinburgh University Press
© 2020 Thomson Reuters.
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