On 14 February 2014 the South African Department of Trade & Industry (DTI) gave notice of its intention to prohibit the use of a large number of European food and drinks names in terms of section 15 of the Merchandise Marks Act (MMA) - confusingly the notice also makes reference to section 13 of the MMA, a section that no longer exists. Section 15 says that the Minister of Trade & Industry can prohibit - either absolutely or conditionally – the use of any mark or word in connection with any trade or business. The unauthorized use of such a mark or word then becomes a criminal offence. The notice - which was presumably issued at the urging of the EU – says that names can in future only be used by producers in the countries indicated, or as per the particular Rules of Use. The notice also makes it clear that the prohibition will not affect the rights of anyone already using any of the names, or names which are similar.
Here’s a random selection of the names mentioned in the notice:
Fruit and Vegetables
Italy – Pomodoro de Pachino.
Denmark – Danablu
France - Camembert de Normandie, Brie de Meaux, Roquefort.
Greece - Feta.
Italy - Gorgonzola, Grana Padano, Parmaggiano Reggiano.
Netherlands - Edam Holland, Gouda Holland.
UK - Blue Stilton Cheese, White Stilton Cheese.
Austria - Tiroler Speck.
France - Jambon de Bayonne.
Italy - Prosciutto di Parma
France - Huile d’olive de Haute-Provence.
Italy - Toscano.
Germany - Bayerisches Bier, Munchener Bier.
Italy - Aceto Balsamico de Modeno.
This notice will obviously have important consequences for many local producers of food and drinks. It will also introduce unwelcome uncertainties. For example, will use of a prohibited name followed by a word like ‘Style’ or 'Type' be problematic (probably yes)? It’s also likely that the issue of just who has acquired unassailable rights could be problematic.
The notice represents the latest episode in a long saga regarding restrictions on the use of (generally European) geographical names or indications. The story goes back a very long way, to a time when the South African authorities - at the request of French authorities - agreed that it would be illegal for anyone to use the name Champagne in relation to wine that hadn’t acquired its little sparkle in the Champagne region of France. More recently, we’ve seen similar developments with names like Burgundy, Port and Sherry.
One of the problems in South Africa has always been that, whereas the EU has long had specific legislation regarding the use of geographical indications - for example Protected Geographical Indications (PGIs) - we had nothing similar in South Africa. The PGI system is widely used in the EU and it can have some surprising consequences. For example, did you know that in Europe the name Cornish Pasty can only be used in relation to pies that rose in the English county of Cornwall, and were made in the traditional manner? More recently - and to the amusement of many - a business that claims to be the inventor of that great Scottish delicacy, the deep-fried Mars Bar, and which is located in the Scottish town of Stonehaven, announced that it wanted to get PGI protection for the name Stonehaven Deep-Fried Mars Bar.
As I said, South Africa has never had specific legislation relating to geographic indications. This may be one of the reasons why there have been such problems with Rooibos, the red-bush tea that emanates from a particular region of South Africa – some years back there was a well-publicised issue in the USA (which was eventually resolved by agreement), and more recently there has been an incident where a French company sought to register the name, an issue that much vexed the South African government. It’s long been felt that, because the name Rooibos doesn't enjoy any protection in South Africa, other countries aren’t going to give it protection either.
But just why the name Rooibos was never protected in South Africa is not really clear. The South African Trade Marks Act has always allowed for the registration of both ‘Certification Marks’ and ‘Collective Marks’. Both of these types of marks are intended for industry bodies, with a certification mark being used to indicate that the goods are of a certain quality or geographic origin, and a collective mark being used to indicate that the producer belongs to the organisation. So a rooibos industry body certainly could have obtained a South African trade mark registration many years ago. And the government could, of course, have declared Rooibos a prohibited mark under section 15 of the MMA.
As a result of the furore surrounding Rooibos in France, the South African government did recently declare Rooibos a prohibited mark under the MMA, and the thinking seems to be that this will help to get protection for the name in other countries. It’s also interesting to note that the controversial traditional knowledge legislation is now in force in South Africa. This legislation introduces the concept of a ‘Geographical Indication’, which is defined as ‘an indication which identifies goods as originating in the territory of the Republic or in a region or locality in that territory, and where a particular quality, reputation or other characteristic of the goods is essentially attributable to the geographic origin of the goods, including natural and human factors’. It provides that geographical indications can be registered as certification marks or collective marks. Although this has always been possible, this specific reference to the new legislation may have the result that it is used more frequently.
This is a complex and confusing area of the law. But an important one, and one that shouldn’t be overlooked.