GI Workshop, 7/ Eunice Njuguna, KIPI

Transcription

1 Drafting Instructions for GI Bill- Highlights GI Workshop, 7/ Eunice Njuguna, KIPI 1

2 Rationale The current law is inadequate The Trade Marks Act provides for protection of Certification Marks and Collective Marks. This is inadequate since a mark is quite different from a geographical indication 2

3 Rationale(continued) Certification marks have been in the Act for quite some time but there has been no tangible growth in the field of geographical indication, although the Registry has registered several certification marks. 3

4 Rationale(continued) The Trade Marks Act was amended in 2002 to provide for collective marks but since then, the Registry has received and registered only one collective mark from Kenya, for Aloe Vera products 4

5 Rationale(continued) The Geographical Indications Law will protect consumers from deception and prevent counterfeiting and imitation The Bill provides for punitive measures against infringement of registered geographical indications Clause 24 5

6 Rationale(continued) Consumers will be protected from dishonest commercial operators who may mislead them into buying products indicating that they originate from a particular territory while they do not Consumers highly appreciate geographical indications and are ready to pay a premium price for originguaranteed products 6

7 Rationale(continued) The protection of producer interests Geographical indications provide added value to the producers. E.G. It has been reported that the Italian TOSCANO oil is now sold at a premium of 20% since its registration in

8 Rationale(continued) Protection of geographical indication will enhance rural development While most patents and trade marks are held by multi nationals and big companies, geographical indications are regarded as community property and a product of community bond and collaboration 8

9 Rationale(continued) While the Kenyan products like tea and coffee have been exported in bulk and used to blend other products, they will now be registered as various geographical indications and exported as such 9

10 punishable by a fine not less than Kenya shillings two hundred thousand (K.shs.200, 000/=) or by imprisonment for a term not less than two years, o Rationale(continued) Protection abroad Kenyan geographical indications will only be protected abroad if they are first protected in Kenya. Since Kenya relies mainly on export of agricultural products for development, enactment of the Bill into law is paramount 10

11 Rationale(continued) Compliance with the TRIPS Agreement Kenya partially complied with the provisions of the TRIPS Agreement with the amendment of the Trade Marks Act in 2002 to provide for collective marks. Enactment of the Bill will mean full compliance with the TRIPS Agreement 11

12 The Bill Section 2-Definitions Agent- one requires admission under the Industrial Property Act, 2001 Competent Authority- This could be for example the Coffee Board of Kenya or the Museum of Kenya 12

13 Geographical Indication-requirements Identify a product Product must originate from a country, region or locality The product must have a given reputation or other characteristics 13

14 The reputation or characteristics must be attributable to the geographical origin of the product It could also be a traditional designation related to a traditional origin 14

15 Indication of Source May relate to both products and services A direct or indirect reference to a product or a service It is not registrable but it is protected under the provisions of the Act, where one can move to the Tribunal to prevent misuse 15

16 Producer This would include any person in the chain of production of the GI product The producers will have to be clearly indicated in the Rules governing the Association that will accompany the application for registration of GI 16

17 Products These are the products in respect to which an application for GI will be made and they will also have to be clearly indicated on the application form. 17

18 The Registrar The Registrar will be the Managing Director of KIPI The Act proposes the appointment of Deputy and Assistant Registrars 18

19 Tribunal All appeals form the Registrar of GI and infringement proceedings will be filed before the IPT established under the Industrial Property Act,

20 User This is the person who will be authorized to use the GI and will be clearly identified on the application form 20

21 Section 5(1) Protection under the Act will be available whether a GI is registered or not However, protection for registered is stronger and easier to enforce 21

22 Section 5(2) The provision means that where immigrants move to a new locality with a name of a certain region, then use of a GI that does not come from the original place is illegal 22

23 Section 6 (1)-Homonymous GI Where the Registrar receives two or more applications for registration of a GI with the same name, for example Kilimanjaro for a GI from Kenya and another one from Tanzania, then he will register both of them. 23

24 Section 6 (2)-Homonymous GI However, the Registrar, following a procedure to be prescribed, will determine the conditions under which the similar name will be used to ensure that consumers are not confused. 24

25 Section 7-Exclusions The Bill proposes several exclusions including: indications which are contrary to public order or morality 25

26 indications that cease to be protected in their respective countries indications which have become generic. For example, is PILSNER registrable as a GI in Kenya for beer?

27 Section 8- Indications of source They are expressions or signs used to indicate that a product or service originates in a country, a region or a specific place They are available for products and services They are not registrable but are protected under the Act 27

28 Section 9(2) Right to file Legal entities like registered associations Representative producers Any competent authority like the Tea Board of Kenya or the Museum of Kenya 28

29 Section 9(3) The issue of representation by an agent has been clarified where the Act will make it compulsory for a foreign applicant to be represented by an agent while a Kenyan applicant may choose to apply on his own or through an agent 29

30 Section 10-Contents of the application The contents of the application include; the particulars of the applicant the delimitated area covered by the GI 30

31 the products the characteristics that make the product qualify to be registered as a GI The application has to be accompanied by the Rules governing the use of the GI 31

32 Section 11 Examination Acceptance Rejection Publication Opposition Registration 32

33 Section 12 Administration The section provides for the person who should manage the GI upon registration, known as the administrator. 33

34 Section 13-Term The term is indefinite and it will remain protected as long as the conditions under which it was registered remain 34

35 Section 14-Maintenance A registered GI will be maintained after every five years on payment of the prescribed fees However, where a GI lapses due to lack of maintenance, it will still be protected under the Act 35

36 Section 15-Right of use The section provides for the persons who have a right to use the GI They have to comply with the Rules governing the use of the GI 36

37 Section 16-Labelling Once a GI is registered, it is proposed that the products should have an identification label The labeling may be done nationally for all the GI products or each sector may have a different label 37

38 Section 17-Change of particulars Where particulars in regard to the name, address or the nationality of an administrator of a GI change, then that fact should be notified to the Registrar who will record the change accordingly 38

39 Other provisions Cancellation of Register Competence of the Tribunal Offences Regulations International arrangements

40 Drafting Instructions for a GI Bill END THANK YOU