Before the regulations, Section 47 provided for the transitional measure for registration of geographical indications.
“Any regulations or rules which, on the date of publication of this Act, are in force under the Trade Marks Act [Chapter 26:04] shall apply, mutatis mutandis, in respect of applications, references, appeals, proceedings and other matters in terms of this Act, until regulations dealing with those matters are published in terms of section forty-four”.
The same legal instruments that were used to regulate trademarks were also applied to geographical indications. However, this situation was not ideal as the forms that were in place did not cater for the specific requirements that the GI Act prescribed when applying for the registration of a GI. A GI goes beyond the nature of a trademark as it is required to specify the quality, reputation or characteristic of the product which is attributable to its geographical origin 3 which requirements are not necessary for trademark registration, aspects which were not catered for in the trademark registration form.
Subject Matter For Protection
One may wonder what it is that this particular law protects and what exactly can be categorized under Geographical indications in Zimbabwe. Let me elaborate hereunder;
In terms of the GI Act a GI is defined as, “an indication, however, expressed, which identifies a product as originating in a particular area, where some quality, reputation or other characteristics of the product is essentially attributable to its geographical origin” 4.
From the foregoing, it is clear that the three essential requirements for a product to be recognized as a geographical indication are that the said GI has to state the quality, reputation or characteristic of the product which is attributable to its geographical origin. These requirements are further buttressed in Section (17) (iv) of the Act and Section 2(d) of the Regulations.
By their very nature, geographical indications are marks but are not necessarily indicative of the source of a particular manufacturer as in the case of trademarks but are indicative of the region where from a particular quality of goods or services originate. Examples for such geographical indications at a national level would include the celebrated Mazoe orange juice which is a beverage deriving its name from the Mazoe region in Zimbabwe, a region where oranges are grown. There is the Mukuyu range of wines coming from the Eastern districts of Zimbabwe and there is the tea called Inyanga that originates from the Nyanga region of Zimbabwe and the famous Kariba bream found in the Kariba area which is known for its very high temperatures. Another prominent GI is a tea called Tanganda which comes from Chipinge in the Tanganda area. There are certain attributes that these products are identified with such as the taste and the quality mainly derived from their geographical location. Elements such as climate, quality of soils normally define the unique attributes of the product.
The Regulations clearly require an applicant to indicate the geographical area to which the geographical indication applies, “in a detailed, precise way that presents no ambiguities and delimited with the link to the characteristic of the product that is attributable to the product”. One wonders whether one is expected to present a map of the specific area, measure the area in covered and provide the accurate geographical bearings for one to meet this “precision” and “detail” required by the Regulations.
What is of interest is that one has to provide evidence that the product originates in the defined area-therefore one may need to obtain corroborative evidence from people in that area where your products originate from to attest the quality and reputation and characteristic of the product. Practical use of this law will guide us as to what is required and what is expected to satisfy this provision.
Cost Associated With CGI’s
What is clear from the Regulations is that it is definitely cheaper to register a GI than a trademark. It costs USD200.00 to register a trademark and USD150, 00 to register a GI.Is this affordable? Whilst registration costs are lower compared to trademark registration costs, they are, in my view, still exorbitant and beyond the reach of the local applicant.
Whilst Section 18 provides that, when an application is accepted, the applicant shall advertise in the prescribed manner that the application has been accepted the Regulations do not provide the costs of such advertisement to be published or the criteria that are used to determine that cost for advertising. Is this cost included in the application fees? A reading of the Regulations would not answer that. It can also be concluded from the Act that if there is no opposition lodged within two months of publication of the advertisement or any appeal made against his decision to register the geographical indication concerned, the Registrar proceeds to register the geographical indication 5, at no additional cost. It seems to me the USD150.00 is adequate for all the administrative costs associated with the registration of a GI unlike the USD330.00 or so that is paid to the Registry when seeking trademark registration. It also pretty affordable (USD20.00) to cancel a geographical indication should an applicant see it fit, though rectifying errors costs slightly more than those aids when making alterations to trademarks. Any amendment to the register will cost USD50.00 as opposed to the USD40.00 that is normally paid for trademarks. If one wishes to file an opposition to a GI, it will cost USD100.00, compared to the USD200.00 paid for trademark opposition. It is worth mentioning that, a public institution is exempted from these fees, in terms of Section 10(3) of the regulations.
What’s Missing From The Regulations?
Unless the writer has visual challenges, they are not aware of, the regulations did not seem to provide the specific manner (form) which is used during Opposition proceedings. They refer to a Notice of opposition as form G1 to be filed by the opposing party on Form G2 used for advertising. My perusal of this form G1 does not in any part of it address the issue of opposition but purely stands out as a form for application of registration. Beats me, how this same form is meant to be applied for opposition proceedings. Our remedy is probably to turn to Section 16 of the Regulations for administrative instructions on this procedure. All hope is not lost, though clarity is often advocated for in these procedures. Unless of course, the legislature did not anticipate any opposition in the granting of this form of IP!
It is still the writer’s observation that GI Act fails to specifically mention the duration to which protection of a GI is given. Reading the Regulations too still does not rectify this anomaly. One cannot tell the period in which an Applicant is given protection of its GI, expressly as is commonly provided in other IP legislation. Fatal to the rights holder and certainly retrogressive to the gains attained by the introduction of this legal instrument.
What Now After Regulations?
Provision of “teeth” to the GI Act means that foreigners and the local applicant in the agricultural sector and other relevant sectors can now effectively protect their legal rights in geographical indications. When accorded such protection of their GI one can exclude anyone else from the use of that particular name on products in the category of products wherein protection is sought. 6 The Act provides a provision that prohibits the use of misleading GIs and provides the proceedings in such and the remedies. The Act prohibits people to apply a misleading GI to any product and prohibits the manufacture, sale, import or export of any misleading GI. The Act regulates the use/misuse of GIs in a bid to define the infringement of a GI or otherwise.
A person who sells, manufactures, imports or exports for the sale-the same product or as the substantially similar product or any product to which the same or a substantially similar geographical indication is applied can institute proceedings to prohibit the use of any misleading GI.
The law is very clear that it will not grant protection over GIs which may be considered as misleading. For the purpose of determining whether a geographical indication, suggests that a product originates in a particular area; or misleads the public as to the area of origin of a product; regard shall be had to the general understanding of consumers or users of the product concerned where it has been, is being or is intended to be sold. From this provision, it is clear that the law puts into context the particular consumers of that product, not anyone. For example, if one was to sell an alcoholic beverage sold in Zimbabwe called ZAMBEZI, which is a region in Zimbabwe where the Zambezi River lies, one would have to target drinkers and not ordinary teetotallers in ascertaining whether they have been misled by the GI.
The GI Act in Section 11 mentions the available remedies in any infringement of any proprietary right, such being interdicts damages, Anton Pillar Orders and attachment. If a person sells, manufactures, imports or exports for the sale-the same product or as the substantially similar product or any product to which the same or a substantially similar geographical indication then one is entitled to such relief by the Court.
Ten years later, the GI Act finally comes into operation. Hopefully, we shall see applications flooding the registry with interested parties in the relevant sectors making use of this Act. It is our hope to see more parties protecting their IP rights through GIs and enforcing their duly accorded rights as enshrined in the GI Act and the newly drafted Regulations. We also anticipate seeing objections from the Registry of trademark applications that seek to protect GIs. Applicants may be directed to apply for the correct form of IP, should Section 45 of the GI Act be strictly applied by the Registrar. There is an overlap of the two forms of IP but the question that a practitioner should ask themselves is, which is the best mode of protection of my Client’s intellectual property, as, at the end of the day, this should be the ultimate determining factor by any responsible practitioner, seeking to attain the best for their Client.
1 Hereinafter referred to as GIs
2 Hereinafter referred to as the GI Act
3 In terms of Section 17 (iv)
5 Section 19(1)
6 In terms of Section 17 (iii)
BMatanga IP Attorneys