The Amendment of the Trade Marks Act & Other Law to Protect Indigenous Terms & Expressions - A Mistake?

The protection of a country’s cultural heritage is meet and just, but the means of doing so has stimulated international debate in many countries where there is sufficient sensitivity to such issues, as well as at the World Intellectual Property Organization (WIPO).
 
The South African Intellectual Property Laws Amendment Bill, which only awaits the President’s signature before coming into force, seeks to amend the Copyright Act of 1978, the Trade Marks Act of 1993, the Designs Act of 1993 and the Performers’ Protection Act of 1967 with a view to  recognising, preserving, protecting and promoting “indigenous knowledge as a valuable economic  as well as a cultural resource, and therefore to create a legal dispensation for the commercial exploitation of indigenous knowledge in a manner that will benefit the country and will ensure that fair financial benefits will be received by indigenous communities and persons” [Preamble to the Bill].
 
The legal protection and enforcement of Intellectual Property (IP), in its many forms, is an esoteric area of law and the current IP judicial regimes, whether in the USA, Europe or elsewhere, are the culmination of long jurisprudential development and deliberation.  Any changes to an established IP regime, as mooted in South Africa by the Intellectual Property Laws Amendment Bill, required the most considerate and careful approach, which, according to its many critics, has not occurred
 
Most of its critics, including many South African intellectual property practitioners, decry the Bill, not because of its intention and purpose, but because it attempts to protect ‘traditional knowledge’ within the scope of the current IP legislation mentioned without any real justification.
 
Monopolies granted by IP laws are bounded by restrictions.  For example, a patent is only granted for a fixed period of time and of course cannot protect an invention which is obvious.  Registered design law is similarly curtailed and trade mark law cannot provide protection for marks which are non-distinctive and which are reasonably required for use in the trade.  These recognisable traits of classic IP do not fit comfortably with the notions of traditional knowledge.
 
Legal protection for ’traditional knowledge’ is often described in terms of the need for the preservation of an existing culture heritage, traditional terms and expressions, folklore and the like, whereas the underlying principle of IP law is the protection of new and sometimes original matter for limited periods.
 
One of the criticisms of the Bill will be apparent from the intended amendments to the Trade Marks Act, where it seeks to extend trade mark protection to traditional terms and expressions.
 
The following definitions will be imported into the Trade Marks Act:
 
“Traditional term or expression means a literary, artistic or musical term or expression with an indigenous or traditional origin and a traditional character, including indigenous cultural expressions or knowledge which was created by persons who are or were members, currently or historically, of an indigenous community and which is regarded as part of the heritage of the community”
 
Distinctiveness, which is the essence of a classic trade mark, is defined in the following terms:
 
“In order to be registrable … a traditional term or expression shall be capable of distinguishing the goods or services of an indigenous community in respect of which it is registered or proposed to be registered, from the goods or services of another community or person, either generally or where the traditional term or expression is registered or proposed to be registered subject to limitations, in relation to use within those limitations.”
 
Terms and expressions which are excluded from protection are included in, and parrot Section 10 of the Act:
 
Marks that consist exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, or other characteristics of the goods or services, or mode or time of production of the goods or of rendering of the services; or
 
Marks that consist exclusively of a traditional term or expression and which in the bona fide and established practices of the trade has become indicative of or is generally associated with the goods or services in respect of which the mark is sought to be registered.
 
In terms of these amendments, a traditional term or expression must be capable of distinguishing the goods or services of one indigenous community from the goods or services of another community.  These two subsections display the same fundamental requirement as that for registration of a classic trade mark, namely distinctiveness.
 
The requirement for distinctiveness, one of the restrictions mentioned briefly above which are driven by basic anti-monopolist tendencies, serves to prevent the legal monopolisation of words that are required in the trade or are simply descriptive.  This is a perfectly sound philosophy in a classic trade mark scenario seeking, as it does, to prevent  unreasonable claims on, at its most basic and obvious, the word SPEEDY for a new motor vehicle, FRUITY for fruit juices, and  LIGHT for laptops, to name but a few examples.
 
Forcing traditional terms and expressions into the Trade Marks Act serves to turn them into a species of IP that they are not meant to be.  To highlight one example, who in South Africa would not like to see the protection of the legendary tea, ROOIBOS as a traditional mark?  Regrettably, the term might well falter at the first hurdle, namely the requirement that it might not “designate the kind, quality, quantity, intended purpose, value, or other characteristics of the goods or services” or that it “consists exclusively of a traditional term or expression and which in the bona fide and established practices of the trade has become indicative of or is generally associated with the goods”.
 
If ROOIBOS has become a traditional term in South Africa to designate a type of tea, why can it not secure legal protection as such a term? Under the proposed law, it will fall foul of the distinctiveness requirements above.
 
Why should a traditional mark have to be distinctive?
 
Apart from jurisprudential issues, of which the above is merely an example, there are any number of technical issues that flow from the amendment of our current IP laws to protect traditional knowledge.  What is most surprising about this approach is Government’s reluctance to wait for WIPO’s recommendations on the very issue. 
 
As a result of its April policy development meeting, the Intergovernmental Committee on Intellectual Property reported “Five days of intense and collaborative negotiations on traditional knowledge and intellectual property reviewed draft articles on the protection of traditional knowledge that could be part of a future international legal instrument.”
 
Clearly, WIPO is treating the subject carefully.  Has our government done the same?
 

Brian Wimpey joined Norton Rose South Africa in April 2011 to head up the Intellectual Property Department.  Since completing his BProc and subsequent post-graduate LLB at the University of Witwatersrand in the early 1980s, Brian has run various interesting high court litigation matters, including, inter alia, representing Google Inc. against an organisation which attempted to use its GOOGLY trade mark to lever some advantage over the former.  He was instrumental in obtaining Supreme Court of Appeal approval for the existence of copyright in pharmaceutical package inserts on behalf of GlaxoSmithKline, and represented the same client in an attempt to enforce the shape of a tablet as a trade mark.  He has also represented the Scotch Whisky Association in their endeavours to prevent the manufacture and sale of counterfeit and false Scotch whisky.
 
His experience comes from a broad range of trade mark and related work, inter alia, trade mark availability searches and trademark filings, litigation in the Supreme Court of Appeal, High Court and before the Registrar of Trade Marks, in respect of unlawful competition, passing off, objections under the Companies Act and the Business Names Act, trademark oppositions and infringements, and to a lesser degree, copyright matters.
 
Brian Wimpey can be contacted by phone on +27 (0) 11 685 8967 or alternatively via email at brian.wimpey@nortonrose.com.