Protection of Geographical Indications in Botswana

SHARE   |   Sunday, 06 July 2014   |   By Othusitse Tlhobogang
Protection of Geographical Indications in Botswana

The protection of geographical indication is provided for in the Industrial Property Act of Botswana administered by the Office of Registrar of Companies and Intellectual Property (ROCIP).  It is a new area and was incorporated into the Act in 2010. The Amendment of the Act, was basically influenced by compliance to the Trade Related aspects of Intellectual Property Rights (TRIPs) Agreement. This agreement is administered by the World Trade Organization (WTO) and all WTO members must to comply with the TRIPs Agreement.

According to the Act, geographical indication means an indication or sign which identifies goods as originating in the territory of a country or a region or locality in a country where quality, reputation or other characteristic of the goods is essentially attributable to that geographical origin. This definition is not totally different from the definition stated in the previous article obtained from the World Intellectual Property Organization (WIPO) website which read thus “Geographical indications are signs used on goods that have specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to particular geographical areas”.

The definition from the Act makes it clear that a geographical indication can be for goods originating in a region or locality within a country. Both definitions highlight that a geographical indication is a sign and that is used on goods that have special qualities unique to the geographical origin.  This teaches us that a geographical indication is a special form of a trademark.  Section 105 of the Industrial Property Act reinforces this statement by providing that the provisions of Part VIII of the Industrial Property Act entitled Marks, Collective Marks and Trade Names shall, with the necessary modifications, apply to geographical indications and their registration.  From the language of the Act and the definitions from a number of sources, the main differences between geographical indications and trademarks is that trademarks do exist for services. Geographical indications do not exist for services. Trademarks may be any distinctive sign used on goods in trade but a geographical indication should communicate quality or characteristics of goods coming from a specific geographical area.

The exclusive right to a geographical indication in Botswana is acquired by registration in accordance with the provisions of the Industrial Property Act.  Simply put a person or a group of persons who use a mark or a sign that can be considered a geographical  indication and do not register it, have no exclusive right over it as a geographical indication. Other persons can use it without the permission of the initial users. A similar requirement to that of trademarks is that a geographical indication must be capable of distinguishing the goods, but the goods for which a geographical indication is applied for should be originating from a specific geographical area and because of the geographical area the goods should possess certain unique characteristics. There should be a connection in terms of quality or characteristics of the goods and the geographical indication. Like a trademark, a geographical indication should not be contrary to public order or morality. It should also not mislead the public or those in the trade, as regards the geographical origin of the goods, their nature or characteristics.

A geographical Indication cannot be registered if it is identical with the term usually used in common language as the common name for such goods in Botswana. Like trademarks, geographical indications can become generic and they lose distinctiveness once they acquire this status and they fall into the public domain. Any person can use a generic geographical indication because once it becomes generic protection ceases.  Generic terms are for everyone in business to use in trade.  A foreign geographical indication is not registered if it is not protected or if it has ceased to be protected or have fallen into disuse, in its country of origin.

When applying for registration of a geographical indication, an applicant completes a prescribed form and pays the prescribed application fees.  The application should be accompanied by a written request addressed to the Registrar of Companies and Intellectual Property containing the geographical indication for which registration is sought; specification containing the name of the products,  a description of the products, which may include the product raw materials and principal characteristics, the definition of the geographical area from which the designated product originates,  evidence that the product originates in the defined geographical area, a description of the method of obtaining or producing the product, including as appropriate, the traditional local methods, and information concerning packaging if it is claimed that the packaging is relevant to the claimed characteristics or is required to safeguard the quality or ensure the genuine origin of the product. Details showing the link between the quality or characteristics of the product and its geographical origin should also be included as well as the name and address of the authority responsible for certifying compliance with the specification.

An owner of a registered geographical indication has the right to permit and to prohibit third parties from using it without his permission and to sue any person using the geographical indication without authorization. Using a registered geographical indication without permission amounts to Infringement.  One should obtain a license to use a registered geographical indication from a registered owner and it is very important for the owner to maintain the right to control the quality of the goods.  Failure to do this is very harmful to the reputation of the geographical indication.  Any lapse in the quality level will result in consumers buying similar or identical goods from competitors.

Now having discussed how geographical indications are protected in Botswana, let’s see if there are opportunities for registration of local geographical indications. Ghanzi is known in farming circles for producing quality cattle. Many farmers there are commercial and are well educated on commercial farming. They have fenced ranches and the incidence of foot and mouth disease is very rare. Due to this, Ghanzi farmers can easily meet European Union standards. Grouping themselves and by setting standards or reinforcing their standards they can come up with a geographical indication for the beef they produce. Unfortunately, the farmers may not be able to register Ghanzi Beef as a geographical indication for the beef they produce.  Ghanzi Beef butchery exist in Gaborone West, if the butchery has got nothing to do with beef produced in Ghanzi and if it is owned by an individual company, commercial farmers in Ghanzi will not be able to register it as their geographical indication.  It is taken. In the Ngamiland or Nhabe region, baskets are made of mokolwane. Other regions use grass to make baskets.  Mokolwane produces fine baskets of various colours and unique quality. The basket weavers there have special skills that are not common in any other region of the country. Consequently, they can register NGAMI or NHABE Baskets as a geographical indication for the baskets made there. This shows that there are many goods or products for which local geographical indications can be registered. What we need to do is to identify the goods, comply with the requirements of  the Industrial Property Act; Chapter 68:03 of the Laws of Botswana, register geographical indications and then consistently maintain the quality of the goods in order to earn more sales and profit from the reputation of the geographical indication.