The South African Minister of Trade & Industry published a list of words for cheeses, meats, olive oils, beers, vinegars, fruits and other foodstuffs on 4 February 2014, the use of which he intends to prohibit under the Merchandise Marks Act. The list includes names such as FETA, FONTINA, GORGONZOLA, GOUDA HOLLAND, GRANA PADANO, ROQUEFORT, PARMIGIANO REGGIANO, TALEGGIO, WHITE STILTON/BLUE STILTON CHEESE (for cheese), PROSCIUTTO DI PARMA (for meats) and ACETO BALSAMICO DI MODENA (for vinegar). The prohibition is proposed as a result of a request by the European Union.
Some of the names on the list are indeed regarded in South Africa as European Union (EU) geographical indications which link the goods to their region or country of origin in the EU; but other names (such as FETA) are used generically in South Africa to describe a style or variety of food product. If the prohibition on FETA, by way of example, is adopted, this will mean that South African cheese producers and retailers may only use FETA in future on cheese produced in, and exported here from, Greece. Producers of feta cheese in South Africa will be left in the lurch.
If the prohibition is adopted, these names may only be used to refer to products which are produced in accordance with the conditions for each category of such goods as stipulated in regulations to be found athttp://www.thedti.gov.za/business_regulation/SA_EU.jsp .
The prohibition will be made under section 15(1) of the Merchandise Marks Act, which provides that the Minister may, by notice in the Gazette, prohibit the use of any word in connection with any trade, business, profession, occupation, or in connection with a trade mark, mark or trade description applied to goods.
If the prohibition goes through, then any person who contravenes it or fails to comply with its conditions for use as prescribed shall be guilty of a criminal offence.
Although the notice provides that ‘proprietors of prior identical or similar marks already in use will not be affected by this prohibition’, it is unclear whether persons who use such words generically on their labels will be regarded as ‘proprietors of marks’ and thereby exempt.
There is a 30 day period from publication for interested persons to make representations in writing. We recommend that producers of foodstuffs (specifically meats and cheeses) and retailers of foodstuffs urgently give attention to the published list of names and take advice on making representations to the Minister to remove those names which are in fact generic in South Africa from this list.