Legal and regulatory constraints on GI protection illustrated
03 June 2013
Given that the rooibos industry in South Africa “has an estimated R600 million turnover [€48.8m] and employs 4,500 people”, there is some confusion as to why comprehensive moves to register rooibos as a ‘geographical indication’ (GI) or a trademark have not been initiated sooner. Seven years before recent French corporate efforts to register rooibos as a trademark, a similar case arose in the United States.
According to an article in South Africa’s Business Day, Soekie Snyman, Coordinator of the Rooibos Council of South Africa, argued recently that the Council had “found it difficult to determine how best to protect the tea”. This was particularly the case since “South African law did not cater for geographical indications”, while EU rules “demand that a geographical indication be protected domestically before the EU accepts it”.
The article notes that the Rooibos Council is now fast-tracking the registration of rooibos as a collective trademark. Similar moves are expected from the South African Honeybush Tea Association. The Council hopes that receiving “official trademark status in South Africa” will be sufficient for the EU to extend GI protection to rooibos in order to combat efforts by the French firm Compagnie de Trucy to obtain exclusive marketing rights, which “could affect South African exporters in any international market”.
The South African government has now sent a communication to the EU seeking “protection of ‘rooibos’, ‘honeybush’ and ‘Karoo’ as geographical indications under the economic partnership agreement between South Africa and the EU”. According to the EC’s economic and trade counsellor in South Africa, the extension of such protection will form part of the EPA negotiations.
Editorial comment
The delays in registering rooibos as a GI in South Africa highlights a broader difficulty faced across the ACP, namely the absence of national legal frameworks for GI protection. In addition to a national legal framework, there must also be a national entity designated with responsibility for registering GIs, with guidelines for the registration of products drawn up and widely publicised. As the South African example illustrates, these are not always in place in ACP countries.
This is not a simple issue, as there are costs involved in establishing the legal and institutional framework for GI enforcement. These costs may only be warranted if a sufficient number of products and value of production is to be afforded GI protection. For example, by 1 January 2013, some 2,768 products were registered in the EU as GIs, with a total value of €54.3 billion. By February 2013, registration of a further 285 “agricultural products and foodstuffs” as GIs was pending (see Agritrade article ‘ French company seeks trade mark rights for rooibos tea, as EU use of GIs...’, 12 May 2013).
The huge coverage of the EU’s GI scheme transforms the economics of establishing and enforcing GI protection, so that producers’ associations can effectively secure the premium prices available. It contrasts sharply with the situation in ACP countries, where only a handful of products may potentially benefit from GI protection and where even in these sectors, producers may only be loosely organised. The lack of well-resourced producer organisations can greatly complicate the process of preparing GI submissions, despite the international databases and wider support available.
These factors may explain why establishing national frameworks for GI protection is not always accorded the highest priority, particularly if trademark registration arrangements are already in place. In this context it is not always clear what additional net benefits GI protection will bring above and beyond those enjoyed under trademark protection. Illustrative of this is the ongoing discussion in Jamaica on the relative benefits of trademark and GI protection regimes for Blue Mountain coffee, where a GI application is still under consideration.
