Broader protection for GIs used on agricultural products

Under recently published regulations in South Africa, geographical names such as Rooibos tea and Karoo lamb may soon be protected as registered South African geographical indications (GIs) under the Agricultural Product Standards Act. Foreign producers of agricultural products, such as Darjeeling tea (from India) and huile d’olive de Haute-Provence (olive oil from France), will also be able to register foreign GIs in South Africa in terms of this act.

On 22 March 2019 the Department of Agriculture, Forestry and Fisheries published regulations under the Agricultural Product Standards Act relating to the protection of GIs used on agricultural products intended for sale in South Africa. The regulations make provision for the registration of GIs that identify agricultural products as originating in South Africa or in a foreign country.

As a result, GIs that identify an agricultural product as originating in South Africa, another country, or a region or locality in a particular territory, where the quality, reputation or other characteristic of the agricultural product is essentially attributable to that territory, may now be registered under the Agricultural Product Standards Act in South Africa.

While the protection of GIs in South Africa was previously relatively broad in the context of liquor products (insofar as the misuse, imitation or evocation of a GI, such as Champagne, including the use of any false or misleading indication as to the origin of a liquor product, was prohibited), the protection in South Africa for GIs relating to agricultural products was more limited.

In this regard, protection of GIs relating to agricultural products was and continues to be possible under the Merchandise Marks Act, which makes provision for the use of certain words only in certain circumstances. By way of example, Feta and Gorgonzola have been protected in South Africa under the Merchandise Marks Act and may be used in South Africa only to refer to cheeses which actually originate from Greece and Italy, respectively.

GI protection contemplated by the Agricultural Product Standards Act may, however, be viewed as broader than the protection that has and continues to be available under the Merchandise Marks Act. By way of example, the registration of Feta and Gorgonzola as foreign GIs under the Agricultural Product Standards Act, will also provide relevant producers with protection against the GIs being imitated or alluded to in the context of similar products.

In terms of the Agricultural Product Standards Act, provision is specifically made for the registration of three categories of GIs:

  • registration as a South African GI;
  • registration as a foreign GI; and
  • registration of foreign GIs that form part of international agreements.

While the registration of South African and foreign GIs is subject to certain conditions that may appear somewhat onerous to producers, foreign GIs that form part of international agreements shall be summarily registered by virtue of an international agreement.

Applications for registration of agricultural products as GIs should at least contain:

  • proof that the GI does not fall foul of certain characteristics, such as that it is not a generic name or that it is not identical or similar to the name of a trade mark used in South Africa on the same or similar agricultural products;
  • certain specifications of the agricultural product, such as the type of agricultural product and proof that the agricultural product originates in the relevant geographical area;
  • a definition of the geographical area; and
  • details which, by way of example, demonstrate the link between the quality or characteristics of the agricultural product and the relevant geographical environment.

Many agricultural producers are likely to welcome the regulations as the protection of GIs often lead to increased commercial activity in relation to, and higher market prices for, protected products, as consumers are often prepared to pay more for quality assurance as a result of a product’s associated geographical reputation.

In fact, Meat of Origin Karoo (NPC), a not-for-profit company established by the Karoo Development Foundation to manage the Karoo Meat of Origin Certification Scheme, has already made application for the registration of ‘Karoo lamb’/’Karoolam’ as a South African GI that identifies meat that originate in the Karoo region of South Africa. The application for ‘Karoo lamb’/’Karoolam’ as a South African GI is the first received under the regulations and it will be interesting to see the outcome thereof.

The protection brought about by the regulations is rather robust in that producers will be in a position to prevent any direct or indirect commercial use in South Africa of a registered GI where such use is in relation to similar agricultural products which are not covered by the registration, as well as dissimilar agricultural products where such use exploits the reputation of the registered GI.

This article first appeared on WTR Daily, part of World Trademark Review, in (October 2019). For further information, please go to www.worldtrademarkreview.com.

Date published: 25 November 2019
Author: Eben van Wyk and Kim Pietersen

Tags: geographical indications agricultural products