African intellectual property law, practice and policies. This weblog provides news, information and comment on IP law, practice and business deals right across Africa. Ce blog propose des actualités, informations, et commentaires sur la législation et la pratique en matière de propriété intellectuelle et de droit des contrats d'affaires en Afrique. For some insight into the origins of this blog click here.
"I thought that your readers might be interested to know that last week the Registrar of Marks, Patents and Designs issued a certificate recognising Scotch Whisky as a Geographical Indication (GI) of Origin in Botswana. The event was notable because it was the first GI registered in Botswana, and it was the first time that Scotch Whisky has been registered as a GI in the African continent.
Scotch Whisky has been made in Scotland for over 500 years and it has developed from a cottage industry created by small farmers in order to use up their leftover grain, to a US$6 billion per annum export industry, making up around 80% of Scotland’s food and drink exports. Increasingly, it is becoming the drink of choice for the emerging middle classes in many African countries and although it is a relatively small market, sales of Scotch to Botswana grew by 163% in 2013.
All Scotch Whisky must be made in Scotland in accordance with a strict legal definition set out in UK law which requires, amongst other things, that it be aged for at least three years in oak barrels. Unfortunately, its success has led to imitations and the Scotch Whisky Association has been tasked by its distilling members to ensure legal protection for their spirit across the world and to take enforcement action against counterfeiters.
Part X of the Botswana Industrial Property Act of 2010, created a system for the protection of GIs in the country. The procedure is relatively straightforward in that a written request for registration must be submitted to the Registrar containing a specification which sets out i) the name of the product that is to be protected, ii) a description of the product, including its raw materials and principal physical, chemical , microbiological or organoleptic characteristics, iii) the area from which it originates, iv) evidence that it is produced there, v) a description of the production method, vi) details of the link between the quality or characteristics of the product and its geographical origin (I understand that this can include natural factors such as climate, and human factors such as traditional skills developed in the area of production), vii) the name and address of the authority responsible for certifying compliance with the specification and viii) any other information subsequently prescribed by regulation. Applications do not appear to be limited to food and drink, and there seems no reason why registration cannot be granted for other traditional products such as, for example, textiles. The Act does not specify who may make the application but in line with international practice, I expect that it would have to be a producers’ association rather than an individual trader.
Once the application has been filed, the Registrar reviews it and if he is satisfied that it meets the necessary requirements, the application is advertised in the Trade Marks Patent and Industrial Designs Official Journal. A period is allowed to enable an interested party to object (in our case it was three months). If there is no objection, or if an objection is rejected, the application is then granted. We found the whole experience to be straightforward, transparent and relatively inexpensive and it took approximately 15 months from start to finish. I think the process was slightly more complicated because it was the first one: for example there was a delay while the Registrar decided what the GI certificate should look like, but presumably subsequent applications will be quicker.
GI owners have a right to prohibit others from using the GI and have a right to take legal action against infringers. Whether we will need to take proceedings in Botswana remains to be seen, but the mere act of registration has attracted a great deal of publicity both here in the UK and in Botswana which not only helps promote the product but also (hopefully) deters those thinking about faking it.
I must confess that my knowledge of Botswana is limited to the Scottish author Alexander McCall-Smith’s tales of Botswana’s No1 Ladies Detective Agency but I believe that the country is famed for the quality of its produce, particularly beef. I shall be waiting in hope to see some local products taking the same path to recognition as a GI."
Afro Leo agrees, wouldn't it be great to see more protection for African GIs protecting innovation characterised by countries of the continent to protect locals, just like the SWA are doing for their whisky producers? For more on GIs on this blog, click here.