Chinasa Uwanna is a Senior Associate at Banwo and Ighodalo, a leading law firm in Nigeria, where her core practice areas are Intellectual Property & Technology, as well as Corporate & Commercial Law. Ms Uwanna has considerable experience in every aspect of intellectual property law practice and has advised on numerous local, cross-border and multi-jurisdictional transactions involving brand registration, transfer, commercialisation, protection and enforcement. She received her LLB from Imo State University, BL from the Nigerian Law School and LLM from the University of Turin, Italy/World Intellectual Property Organisation (WIPO). In this conversation with the Commercial Law Research Network Nigeria (CLRNN), Ms Uwanna discusses the law and practice of geographical indications in Nigeria.
Commercial Law Research Network Nigeria (CLRNN): Argan Oil (Morocco), Oku white honey (Cameroon), Penja Pepper (Cameroon), Rooibos (South Africa) and Champagne (France) are examples of Geographical Indications (GIs). For those unfamiliar with the term, please explain GIs and why they are relevant to Nigeria.
Chinasa Uwanna (CU): I will start by drawing attention to the definition by the World Intellectual Property organisation (WIPO). It defines GIs as names or signs used on products that have a specific geographical origin and possess qualities or reputation that are due to that region. Simply put, GIs are signs used on products that have a specific geographical origin, and possess qualities, characteristics, or reputation that are due to their place of origin. There is a clear link between the product and its geographical place of production. GI laws prohibits unauthorised parties from using the registered GI on any other product, which is similar to or misleading to the registered product.
GIs are extremely relevant to Nigeria, because as indications of source, they inform consumers, both local and international, about the origins of products. Moreover, GIs embody the values, reputation and history of a given product and are born out of the contributions of local producers. Local producers’ contributions as producers of unique products could lead to the promotion of trade and investment. Accordingly, and as global trends show, GIs are important to Nigeria as collective assets for value creation processes. Local stakeholders can make use of GIs and participate in its value creation, thereby contributing to social and economic growth. Thus, it is important for Nigeria to carefully design strategies to protect and commercialise GIs.
CLRNN: What are examples of national products that can be protected as GIs and what strategies should be adopted to identify potential products?
CU: We have numerous products that originate from Nigeria that have gained both local and international recognition. From the clothing sector, we have aso oke, ofi and adire (an indigo dyed cloth produced in South Western Nigeria). In the agricultural sector, we have lots of products such as ijebu garri, ofada rice, ose Nsukka and agbalumo, which are all unique to Nigeria. The moment the characteristics, production expertise and consumption experiences of a product are associated with its origins so that it acquires a certain reputation and becomes – or has the potential to become- a valuable asset, it should be classified as a GI. Nigeria needs to first identify the GIs it has. We have many unique products. The country needs to employ conscious and concerted efforts to identify what could constitute GIs in the country and take steps to protect them through effective legal frameworks.
CLRNN: Nigeria currently protects GIs under its Trade Marks Act of 1965. The Merchandise Mark Act of 1915 also prohibits false trade descriptions. Please discuss the GIs legal protection frameworks in Nigeria.
CU: Section 43 of the Trade Marks Act defines certification marks as including marks adapted in relation to any goods to distinguish them. These marks are certified by relevant persons in respect of the origin of the material, method of manufacture, quality, accuracy or other characteristics. Nigeria provides for the protection of certification marks (but excludes collection marks). The Merchandise Act prohibits false trade descriptions. It defines false trade descriptions as trade descriptions that are false or misleading in a material respect with regard to the goods to which it applies. It also defines trade description to include any description, statement or other indication directly or indirectly as to the place or country in which any goods are made or produced.
It is possible to register a geographical indication as a certification mark in Nigeria pursuant to Section 43 of the Trade Marks Act. From the definition above, it is clear that they possess certain similar characteristics to a GI. Owners of a registered certification mark in Nigeria, typically independent enterprises, institutions and government entities, are competent to certify the product concerned, they have the same rights as attached to a standard trademark registration, including the exclusive right to use and allow the persons who satisfy the same conditions to use the certification marks. However, there are differences between the protection accorded to a certification mark and a GI. For example, the use of a translated version (that is, translated into another language) of a certification mark does not constitute an infringement. Whereas, under international treaties and agreements, GIs are protected from being translated into another language and used for goods that are not linked to the GI and its place of origin. This has a way of diluting the importance and significance of the GI – as it no longer bears its actual name. A certification mark may be owned by private party and will be enforced privately. On the other hand, a GI is a collective right that enjoys both private and public enforcement.
In practice, what I have found is that most of our clients are hesitant to register their GIs as certification marks. Under Nigerian laws, anybody can oppose the registration of a trademark as soon as it is advertised, by setting out the grounds upon which the person relies to oppose the registration. It does not matter whether you have registered your rights or not. That is not a requirement under the law to institute an opposition. As such, clients typically prefer to go by way of opposition. They set down the grounds explaining their entitlement to the GIs that have been attempted to be registered as trademarks. We also have memoranda with relevant regulatory organisations. The fight to protect GIs in Nigeria cannot be won by the owners alone. It requires a concerted effort of different relevant stakeholders. For example, in addition to regulatory agencies like National Agency of Food and Drug Administration and Control (NAFDAC), Standard Organisation of Nigeria (SON), Nigeria Customs Service (NCS), Nigeria Police Force (NPF), we rely on the trademark registry.
Enforcement actions via litigation is usually a final step. Most cases are instituted under “passing off” because under Nigerian laws, for you to even maintain an action in infringement, you have to first have a registered product (under the Trade Marks Act, you can only institute an action for infringement where you have a registered right). When one feels that their brand, name, trademark or GI is being infringed upon by another party, there is an option of instituting an action in passing off or an infringement action. Like I explained, a lot of times, clients are not willing to register their GIs as trademarks, because they are technically different, and they would prefer for it to remain that way. Recall that Nigerian law says that you cannot register a name of a geographical location as a trademark. We had a case where we tried to register Havana for tobacco, and it was rejected by the trademark registry on the ground that it is the name of a place. We had to show proof that it is a product owned by the state and used in commerce. In sum, you are not allowed to register a geographical name as a certification mark because all sorts of issues, including rejections and objections, come up when you try.
CLRNN: You have worked with the Comité Interprofessionnel du vin de Champagne, (CIVC) and Institut national de l’origine et de la qualité (INAO) to protect Champagne in Nigeria. What are your perspectives on the registration and enforcement of foreign GIs in Nigeria?
CU: I have had a bit of experience with foreign GIs in Nigeria. As discussed above, Nigeria is yet to enact laws specifically for the protection and promotion of GIs. As a result, it is very difficult to protect GIs in the country. However, it is not impossible to do so. In some other countries, we know that they have established laws and organisations or institutions charged with the responsibility to safeguard GIs. In Nigeria, we try to protect GIs using primarily the Trade Marks Act and we have established that you cannot register a name that is solely a geographical name as a trade mark. We have cases where we have filed oppositions on behalf of foreign clients, challenging the attempted registration of foreign GIs and providing evidence to show that these have been registered internationally. We also try to inform people on what would constitute a GI/GI infringement, we work with some of the regulatory agencies. For instance, NAFDAC, which is charged with the responsibility of registering food and drug products in the country with whom we liaise to ensure that they are aware of the foreign GIs registered in the country. So, if anybody, who is not entitled to register or use a name or idea on a product, attempts to register it, we have a memorandum of understanding with regulators to ensure that this will not go through. We also employ the Merchandise Act to challenge false trade descriptions. My point is that we have been utilising the existing laws as best we can but the existing legal frameworks give rise to diverse challenges and limitations.
CLRNN: Drawing from your legal practice experience, what are the benefits and shortcomings of protecting GIs as trademarks or sui generis GI systems?
CU: The latitude that is provided in the options for protecting GIs stem from the plethora of international agreements on GIs, including TRIPS. Article 22 of TRIPS provides that:
“members shall provide the legal means for interested parties to prevent: (a) the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area or other than the true place of origin in a manner which misleads the public as to the geographical origin of the good; (b) any use, which constitutes an act of unfair competition within the meaning of Article 10bis of the Paris convention 1967.”
Considering the existing legal framework in Nigeria, I think that organisations and association should consider registering their GIs as trademarks. Whilst they are technically different types of IP, they serve similar purposes, as they indicate the source/origin of a product used in commerce. Having said that, the advantages of registering as a trademark would be that it is a simpler process. It is prima facie evidence that the product belongs to person/organisation/institution. In fact, anybody that attempts to register the same product would probably get an objection at the point of examination. Nonetheless, as soon as the product is registered as a trademark, all other sorts of issues surface. For example, you have to be careful to ensure that you monitor your trademark, you have to be sure that does not lapse, because it could be taken off the register if it is not renewed when due or if it is not used for a certain period in the country. In other words, all the rules and regulations that govern trademarks will become applicable. Whereas for most sui generis GIs, you do not need to follow all of the aforementioned rules and regulations. Anybody that is from that region and satisfies all the requirements or qualifications for use of the geographical indications can use it without recourse to trademark registration.
CLRNN: There are increasing national and international interests in developing the GIs architecture in Nigeria. What changes to GIs would you like to see in the country?
CU: I would say that the first step should be national legislation; the enactment of a law to protect our GIs. The enactment of such laws will lead to increased awareness of the protection of products that emanate from Nigeria, thereby resulting in increased value for exports. Another change would be for Nigeria to engage in the protection of GIs through membership of sub-regional intergovernmental intellectual property organisations such as African Regional Intellectual Property Organisation (ARIPO). Furthermore, the effective implementation and domestication of international agreements for GIs. For example, although Nigeria is a signatory to TRIPS, its obligations under GIs have not been fulfilled. The Nigerian constitution mandates the domestication of international treaties before they enter into force.
I would also say that we need to establish a GI protection institution such as what they have in France. A body or organisation established primarily to identify products that originate from/and are peculiar to Nigeria, which is charged with responsibility of promoting GIs in Nigeria and at the international level, as well as protecting them from infringement. That body or organisation would raise awareness at regional and international levels on how to identify and classify Nigerian products, amongst others. These are the main changes that I would like to see. That is, effective national legislation, membership of sub-regional intergovernmental intellectual property organisations, domestication of treaties, as well as establishment of an independent GI protection body or organisation.
CLRNN: Please share your suggestions on ways for Nigeria to implement these changes and final thoughts on GIs in Nigeria.
CU: Relevant government agencies, such as the Trademarks, Patents and Designs Registry and Nigerian Copyright Commission, as well as the private actors need to reignite the conversations about legal reforms for intellectual property and GIs in Nigeria. These stakeholders should lobby for the enactment of specific laws to protect GIs in Nigeria, as either a separate dedicated law or through the passage of the pending IPCOM bill, which caters to GIs. The government also needs to align GIs with its ongoing agricultural campaigns.
We should also raise awareness about GIs among stakeholders, especially policymakers, producers, (agri)businesses and consumers because the enactment of laws to protect GIs will not be effective where the producers and consumers of these GI eligible resources are unaware of the importance and benefits of GIs. In addition, we need to employ practical means of enforcing the protection of GIs to prevent unauthorised use.
Importantly, local producers would need to be organised to properly research, document and standardise the unique features or methods required to produce GI eligible goods. For example, Scotch Whisky is not just any whisky made in Scotland, it is whisky made in compliance with detailed prescribed standards and methods. It is not enough to just say that a product is from Nigeria. The products have to maintain predetermined standards. All our efforts must begin from home.
CLRNN: Ms Chinasa Uwanna, Intellectual Property Lawyer and Senior Associate, Banwo and Ighodalo, thank you.