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The Legal Framework for the Protection of Geographical Indications in Ethiopia: A Critical Review

Published online by Cambridge University Press:  27 August 2014

Sileshi Bedasie Hirko
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Abstract

The legal protection of geographical indications (GIs) has become an important concern in both developed and developing countries. In Ethiopia, despite the existence of the need and enormous potential for the protection of GIs, the issue of GIs has not been given due attention. The legal protection of GIs in Ethiopia has not been expressly regulated by any specific legislation. It may arguably be protected under a collective trademark system. However, this system only operates for distinctive GIs. Consequently, most descriptive GIs are not embraced by the system unless the distinctiveness requirement is dispensed with for the registration of GIs as collective trademarks. Moreover, the existing system needs to be redefined in light of the notion of GIs under the TRIPs Agreement. It is therefore high time that an appropriate legal framework be designed to ensure the effective protection and enforcement of GIs in Ethiopia.

Type
Research Article
Information
Journal of African Law , Volume 58 , Issue 2 , October 2014 , pp. 210 - 230
Copyright
Copyright © SOAS, University of London 2014 

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References

1 Ethiopia applied for accession to the WTO in 2003 and has since been in the process of accession, with observer status. See “Groups in the WTO”, available at: <http://www.wto.org/english/tratop_e/dda_e/negotiating_groups_e.pdf> (last accessed 25 June 2011) and “The WTO -accessions: Ethiopia”, available at: <http://www.wto.org/english/thewto_e/acc_e/a1_ethiopia_e.htm> (last accessed 26 June 2011).

2 Annex 1C of the Marrakesh Agreement establishing the WTO, 1994.

3 According to the African Development Bank, agriculture in Ethiopia accounts for 45% of the country's GDP, with 80% and 75% of total employment and exports respectively. See African Economic Outlook: Ethiopia (2005, African Development Bank / Organization for Economic Co-operation and Development)Google Scholar at 227.

4 Roussel, B and Verdeaux, F “National patrimony and local communities in Ethiopia: Advantages and limitations of a system of geographical indications” (2007) 77/1The Journal of the International African Institute 130CrossRefGoogle Scholar at 146.

5 See UNDP “African economic outlook: Ethiopia 2014” at 6, available at: <http://www.africaneconomicoutlook.org/fileadmin/uploads/aeo/2014/PDF/CN_Long_EN/Ethiopie_EN.pdf> (last accessed 17 July 2014). Ethiopia is also one of the world's leading sesame producing countries. Sesame varieties mainly from Humera and Wollega were among the world's top commodities, with 250,000 metric tons being offered for the international market in 2010. Ethiopia is also the birthplace and Africa's leading producer and exporter of special varieties of Arabica coffee. See Lightbourne, M “Organization and legal regimes governing seed markets and farmers' rights in Ethiopia” (2007) 51/2Journal of African Law 285CrossRefGoogle Scholar at 293–97.

6 The three speciality coffees are Harar, Yirgachaffe and Sidamo. See generally Arslan, A and Reicher, CP “The effects of the coffee trademarking and Starbucks publicity on export prices of Ethiopian coffee” (2010) 1606 Kiel Working Papers 1Google Scholar.

7 JO Odek “Intellectual property: Protection of geographical indications in Kenya and the TRIPS Agreement” (paper presented at World Intellectual Property Organization High Level Forum on IP Policy and Strategy, Tokyo, 2005) at 29.

8 See Watson, J and Streatfeild, J “The Starbucks / Ethiopian coffee saga: Geographical indications as a linchpin for development in developing countries” (2008) 3 Policy Notes: Trade 1Google Scholar at 4.

9 Ibid.

10 This may entail the obligation to phase out the use of “champagne” for certain products in Ethiopia. See also Roussel and Verdeaux “National patrimony and local communities”, above at note 4 at 146.

11 Commercial Code of 1960, art 148.

12 Id, art 133; Civil Code of 1960, art 2057; and Penal Code of 1957, art 674.

13 See Goldberg, EF “Protection of trademarks in Ethiopia” (1972) 8/1Journal of Ethiopian Law 130Google Scholar at 133.

14 Ibid.

15 Art 133(1) of the Commercial Code defines unfair competition as “any act of competition contrary to honest commercial practice”. In particular, according to art 133(2)(a), “any acts likely to mislead customers regarding the undertaking, products or commercial activities of a competitor” shall be deemed to be acts of unfair competition.

16 Even though art 148(1) of the Commercial Code (which contemplates the enactment of special laws) merely indicates trademarks as industrial property, they are basically provided as a component of a business. Art 127 also lists trademarks as “elements” of a business, which itself would be deemed to be property in the code. It should however be noted that a “business” which consists of trademarks is deemed only to be ordinary incorporeal property by the code, not intellectual property which gives rise to exclusive rights.

17 Id, art 133(1).

18 An act that may constitute unfair competition is not limited to the instances under art 133(2). In other words, the definition of unfair competition is flexible enough to be adapted to changing commercial usage. See Goldberg “Protection of trademarks”, above at note 13, footnote 22 at 134.

19 See art 10 bis (3) of the Penal Code which provides for the third instance of unfair competition. Clearly, this instance, though not mentioned under art 133(2) as such, is within the purview of acts contrary to honest commercial practice.

20 Penal Code, art 674.

21 Id, art 674(1)(a).

22 Civil Code, art 2035(1).

23 Trademark Registration and Protection Proclamation No 501/2006 Federal Negarit Gazeta of the Federal Democratic Republic of Ethiopia (12th year, no 37, 2006) (Trademark Proclamation).

24 Id, preamble, para 1.

25 Id, para 2.

26 Id, para 3.

27 Id, art 2(1).

28 Id, art 2(12).

29 Ibid.

30 It must be borne in mind that the word “includes” in the definition indicates that the lists are not exhaustive.

31 K Das “Protection of geographical indications: An overview of select issues with particular reference to India” (Centre for Trade and Development working paper 8, 2007) at 5.

32 See Trademark Proclamation, art 18(3).

33 See also Das “Protection of geographical indications”, above at note 31 at 114.

34 See Schuessler, L “Protecting ‘single-origin coffee’ within the global coffee market: The role of geographical indications and trademarks” (2009) 10/1The Estey Centre Journal of International Law and Trade Policy 149Google Scholar at 169–70.

35 Trademark Proclamation, art 6(1)(e).

36 See id, arts 11 and 36(1).

37 See the TRIPs Agreement, art 2(1).

38 It is stipulated under art 6(2) of the Trademark Proclamation that the inadmissibility under art 6(1)(e) of the proclamation does not apply if it is certified on the date of the application for registration that the trademark has, through use, become well known in Ethiopia.

39 This provision is almost a verbatim copy of art 7(1)(c) of EC Regulation 40/94 on the community trademark.

40 The misleading test in the proclamation can be drawn from the phrase “likely to mislead the public or the business community”.

41 The legal protection for wines and spirits under the TRIPs Agreement is considered absolute in the sense that the highest level of protection is provided for these products compared to the level of protection for ordinary products. In this regard, the level of protection guaranteed under the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration has only been maintained under the TRIPs Agreement for wines and spirits. See NS Gopalakrishnan “Exploring the relationship between geographical indications and traditional knowledge: An analysis of the legal tools for the protection of geographical indications in Asia” (Intellectual Property Rights and Sustainable Development: UNCTAD/ICTSD Program on IPRs and Sustainable Development working paper, August 2007) at 13 and 16, available at: <http://www.iprsonline.org/ictsd/docs/Gopaletal%20-%20GIs&TK.pdf> (last accessed 29 June 2014).

42 The TRIPs Agreement provides for sets of minimum standards to be applied by all members of the WTO. Once Ethiopia accedes to the WTO, the country will be obliged to comply with the provisions of the TRIPS Agreement through legislative measures, among others. Of course, the country will be free to adopt whatever method it deems fit to comply with the required level of protection for GIs under the TRIPs Agreement. See Correa, CMIntellectual Property Rights, the WTO and Developing Countries: The TRIPS Agreement and Policy Options (2000, Zed Books Third World Network)Google Scholar at 8. See also TRIPS Agreement, art 1.

43 Arslan and Reicher “The effects of the coffee trademarking”, above at note 6 at 2–8.

44 See Trade Practice and Consumers' Protection Proclamation No 685/2010 Federal Negarit Gazeta of the Federal Democratic Republic of Ethiopia, 16th Year, No 49, 2010. The Trade Practice Proclamation No 329/2003, which was in force prior to the promulgation of the current proclamation, has been repealed.

45 In order to avoid redundancy, this article does not discuss further the legal provisions which have already been discussed as regimes applicable for the protection of GIs prior to the Trademark Proclamation and which are still in force.

46 Commercial Code, art 133(1).

47 So long as the false use of the indications is likely to mislead the public as to the origin of the goods, the provisions of the Commercial Code can be invoked for protection despite the absence of an explicit mention of geographical indications or equivalent terms.

48 Trade Practice Proclamation, art 21(2).

49 For instance, art 22(1) of the proclamation provides for consumers to have the right to receive sufficient and accurate information about goods. This right obviously correlates to the corresponding duty of other business persons not to commit acts that are likely to mislead or confuse consumers as to the nature, quality or origin of the goods, as provided in particular under art 21(2)(a) of the proclamation.

50 A Fentaw “Ethiopian unfair competition law” (The University of Oxford Centre for Competition Law and Policy working paper CCLP(L) 21, 2008) at 4.

51 Goldberg “Protection of trademarks in Ethiopia”, above at note 13 at 139.

52 See O'Connor, BThe Law of Geographical Indications (2007, Cameron May Publishing)Google Scholar at 69.

53 The relevant provisions of unfair competition law under the Commercial Code may still be applicable so long as they do not contradict the provisions of trademark law. The same holds true for other relevant provisions under other laws.

54 See Trademark Proclamation, arts 6(1)(e) and(f) and 6(2). It is also important to keep in mind that the proclamation allows for registration of generic terms so long as they become well known as a result of their use in Ethiopia up to the date of the application for registration.

55 Trademark Proclamation, art 6(1)(e).

56 Gangjee, D “Protecting geographical indications as collective trademarks: The prospects and pitfalls” (2006) 14 IIP Bulletin 112Google Scholar at 114.

57 Trademark Proclamation, art 6(1)(h).

58 See Civil Code, art 2057. In cases of infringement of registered GIs, the issue of bad faith may not be challenging as such, since the registration itself, which serves as a notice to third parties including the infringer, defeats the defence of good faith by the infringer.

59 See Fassil, ZInstitutional Capacity to Administer and Enforce IP Rights in Ethiopia: Prospects and Challenges (2013, Lambert Academic Publishing GmbH KG)Google Scholar at 37.

60 Trade Practice Proclamation, art 21(1).

61 See TRIPs Agreement, art 22(2)(a).

62 See Trademark Proclamation, art 40.

63 Id, art 40(2).

64 Ibid.

65 For a civil action to be based on general commercial unfair competition, art 132 of the Commercial Code cross-refers to art 2057 of the Civil Code. This provision of the Civil Code alone can also be a legal basis for damages, while art 2121 can be invoked for injunctive relief. Art 2035 of the Civil Code may also be relevant as a legal basis for civil liability arising from the violation of explicit provisions of any law. This is however too general to be relied on where a specific provision is available for the purpose of claiming damages.

66 See Trademark Proclamation, art 39.

67 Id, art 39(6).

68 Id, art 41(2).

69 See Trademark Proclamation, art 42(3).