Protection of Geographical

Indications in Kenya
EU/ARIPO/KIPI Workshop on Geographical Indications

Best Western PREMIER HOTEL, Nairobi-Kenya, 7-8 October 2013

Geoffrey M. Ramba-Senior Trademarks Examiner:BSc (Botany,Zoology/Geography),

MSc in Management of Intellectual Property Law.

Kenya Industrial Property Institute

Tea Farms-Mount Kenya
Kenyan Tea-Mount Kenya Area
Kenyan Coffee
Kenyan Coffee
Kenyan Coffee
What is a GI?
Most of us are aware of Geographical Indications (GI) products.

Examples: Champagne, Gruyere Cheese, Scotch whisky, Idaho Potatoes

and Solingen knives.

Majority originate from more developed regions.Some are from developing

regions e.g. Argane Oil, Basmati Rice & Cafe de Columbia.

No universally accepted definition of a GI. In Kenya the following is the

proposed definition of a GI (as envisaged in the draft legislation)

Geographical indication" means an indication which identifies a

product as originating from a territory, or a region or locality where a
given quality, reputation or other characteristics of the product are
exclusively or essentially attributable to its geographical origin;

Indication includes any name, traditional designation, geographical, or

figurative representation or any combination thereof conveying or
suggesting the geographical origin of goods to which it applies;
GIs as a branding tool
The function of GIs in branding is similar to that of trademarks except
that while trademarks identify the product with the owner, GIs mainly
identify the product with the origin.

Another major difference between trademarks and GIs is that while the
former can be assigned to willing enterpreneurs to capitalise and
market them, GIs cannot be assigned and are rooted to the origin.

While trademarks are private rights and thus easier to enforce, GIs are
public rights (belonging to groups of individuals in a certain region, co-
op societies, government bodies etc.) and thus harder to enforce in
case of infringement.

While trademarks may have some qualities-defined or undefined,GIs

have unique qualities, reputation or other attributes that attract and
assure the consuming public.
Motivation for Kenya In Protecting
Geographical Indications
Famous Kenyan products coffee, tea

Other products-handicrafts, carvings, soapstone

Horticultural products, flowers

Other plant based products: Aloe-vera, Bixa, Gum Arabic

Low returns despite famous reputation

Agricultures high contribution to the countrys GDP

Most farmers-rural based, small farm sizes

High rural-urban migration/Need to accelerate growth of rural

areas/devolution model with county based focus for rural development.
Feasibility of GIs in Kenya
A feasibility study was done in May 2007 by the Swiss Intellectual Property Institute.

A number of products/producers had been pre-selected from available literature.

A number of producers/organizations targeted for study.

Interviews/collection of information.

Field visits: done in Wamunyu and Nyeri.

Other literature was also used.

After positive results, a Technical Cooperation Project on GIs between Kenya (KIPI)
and Switzerland (IPI) was approved. Some work was done from the recommendations.

Another study done in March 2011 by EU-ACP brought similar findings.

Latest study done earlier this year-EU/REDD: Tentative results out.

Organizations/Producers Interviewed
(in the 2007 study)
Kenya Industrial Property Institute

The Tea Board of Kenya-TBK

The Coffee Board of Kenya-CBK

International Centre for Insect Physiology & Ecology-ICIPE

New Kenya Cooperative Creameries Limited-KCC

Kenya Wine Agencies Limited-KWAL

Horticultural Crops Development Authority-HCDA

Honey Care Africa

Wamunyu Handicraft Industries

Gathuthi Tea Factory-Nyeri

Mukurwe-ini Coffee Cooperative Society

Java Coffee House

Results of the Feasibility Study (2007)
Kenya has a high potential of GIs

Country has significant potential of GIs with a number of GI products identified.

Products with highest potential-coffee, tea, soapstone, honey & wild silk

Potential for dairy industry, handicrafts, horticulture limited

Country has incomplete legal framework on the subject*

Market familiar with the legal concept of GIs

Cases of misuse/misrepresentations identified

Many products well researched & documented

Quality labels widely used

Export products undergo a strict quality control mechanism

Producer associations reasonably well informed

Recommended Pilot GI Products
Product/ Producer or Regulator

Tea-Tea Board of Kenya

Coffee-Coffee Board of Kenya

Yatta Wine, Papaya Wine-Kenya Wine Agencies Limited (a Govt Body corporate)

Kisii Soapstone-KISCOOP

Wamunyu Handicrafts-Wamunyu Handcrafts Association

Wild Honey and Wild Silk-ICIPE

Voi Oranges and Ngoe Mangoes-HCDA

Protection of Geographical Names as
Trademarks-The Trademarks Act Cap 506

Due to the General principle that individual trademarks

must not be descriptive or deceptive, geographical terms
cannot serve as trademarks, unless they have acquired
distinctive character through use, or their use is fanciful
and therefore, not deceiving as to the origin of goods on
which the trademarks are used.

However, this rule does not apply to certification marks

and collective marks.
Certification Marks I
Marks, which indicate that the goods or services on which they are used
have specific qualities, which may also include geographical origin. The
owner of a certification mark undertakes to certify that all goods or services
on which the certification mark is used have those qualities. The owner of a
certification mark does not have the right to the use of the mark.Generally
referred to as the Anti-use principle.

Part VII Section 40 of the Trade Marks Act defines Certification Trade Marks
as A mark adapted in relation to any goods to distinguish in the course of
trade goods or other characteristic from goods not so certified shall be
registrable as a certification trade mark in Part A of the register in respect of
those goods in the name, as proprietor thereof, of that person: Provided that
a mark shall not be so registrable in the name of a person who carries on a
trade in goods of the kind certified.

Producers who comply with the standards of production as defined (and

deposited with the Registrar of Trade Marks) by the owner of the certification
mark have the right to use that mark.
Certification Marks II
Given for compliance with defined standards.

May be used by anyone whose products meet established standards

Owned by a certifying body-collectively used

Certifying body must be competent to certify

Rules governing similar to those of collective marks.

Certifying body normally does not use the mark.

Local examples KBS mark, others from the horticultural industry..

International example-the Woolmark (100% wool)

Collective Marks I
In practice, difficult to distinguish collective marks from certification marks;
difference is one of form rather than substance. Membership usually upon
compliance of certain rules, e.g. the geographical area of production of the
goods on which the collective mark is used or standards of production of
such goods.

Another substantial difference between the two; owners of collective marks

are regularly not barred from using the mark themselves.

Collective marks enforced under The Trademarks Act (as amended in 2002)

A collective mark is defined: A mark capable of distinguishing, in the

course of trade, the goods or services of persons who are members of an
association, from goods or services of persons who are not members of such
an association, shall on application in the prescribed manner, be registrable
as a collective mark in respect of the goods or services in the name of such
an association.
Collective Marks II
Collectively owned by associations or cooperative societies.

Set of criteria for using- e.g. Standards or locality

Individual companies/members may use mark

Used by several members

Rules/regulations governing use

Possible examples -MWEA RICE, AHERO Sugar, Reg. Echuchuka-

Turkana aloe vera

Used in some countries e.g. USA, as an alternative to GIs-Darjeeling tea.

Who Can Use a Collective Mark?

Use of a collective mark is limited to members of the association which owns

the mark.

Anyone else who is not a member of that association does not have any right
to use the mark.

This is regardless of the quality or characteristics of the goods or services

which they supply.

However, fulfilment of the quality or those characteristics should enable one

be admitted to use the mark.
Regulations Governing Registration of
Collective/Certification Marks

Must satisfy conditions of a trademark.

Indication of geographical origin.

Mark should not be misleading.

Regulations to govern use of the mark./Approval of regulations by Registrar.

Regulations to be open to inspection.

Amendment of Regulations.

Infringement: Rights of authorized users.

Grounds for revocation of registration/Grounds for invalidity of registration.

Examples of Registered GIs

Registered as Collective/Certification Marks

Echuchuka- unique aloe vera found near Lake Turkana

Coffee Kenya-So Rich So Kenyan-Coffee Board of Kenya

The Finest Kenyan Tea, Mark of Origin-Tea Board of Kenya

Maasai/Masaai Trademark for various cultural products.

Others (Kenya Bureau of Standards, Kenya National Accreditations

Services)
The Draft Geographical Indications Bill 2011
Definitions
Geographical indication" means an indication which identifies a product as
originating from a territory, or a region or locality where a given quality,
reputation or other characteristics of the product are exclusively or essentially
attributable to its geographical origin;

indication includes any name, traditional designation, geographical, or

figurative representation or any combination thereof conveying or suggesting
the geographical origin of goods to which it applies;

To be administered by KIPI

Registrar of Trademarks=Registrar of Geographical Indications

Operational details to covered in separate presentation (from KIPI)

Obtaining Protection in Other Countries
Kenya has not yet acceded to either of the two international GI agreements
(Madrid and Lisbon) concerning the protection of GIs. Only option for mutual
protection of GIs with other countries would be bilateral agreements.

Kenya is a member of both the Madrid Agreement and Protocol since 1998.

Bilateral agreements typically concluded between two countries on the basis

of reciprocity in order to increase protection of the countries respective
geographical indications. No Bilateral on GIs in Kenya.

May be independent treaties or form part of a wider trade agreement. May

simply provide for a prohibition of use of the other partys GIs for goods
(usually listed in annexes to the agreements) not having that origin.

They may also go further and provide for extra-territorial application of the
other countrys national law, concerning the protection of GIs.
The need for GIs in Kenya
Development of brands is the only way to remove the Kenyan coffee and tea
farmers from commodity status and sustained competition.
The fact that Kenyas teas and coffees are highly sought after for blending
means they are already unique in themselves and that the producers stand
to gain through value adding and branding.
This is easier for tea-sold as a finished poduct but slightly harder for coffee
mainly sold as a raw product-green coffee.
The coffee and teas coming from Kenya are not homogeneous though they
are mainly mixed and sold that way.
About five different regions have been positively identified with particular
products characteristics associated with unique qualities.
For Kenyan tea, the buyers-mainly from Pakistan know particular tea
gardens(factories-rural based) like Gathuthi, Makomboki etc. from where
they insist on sourcing their tea produce for resale while heavily blended.
The irony is that the same unscruplous traders resell these teas using the
well-known garden names (with no proprietary rights).
The market ends up selling more production of a certain tea garden than the
actual production done in that particular season!
The need for GIs In Kenya II
Commodities that have not been branded are usually unable to withstand the
vagaries of the economic weather.

Selling the produce as commmodities only enriches the sellers at the top
level of the value chain and there is little trickle effect (if any) to the
producers.

Kenyan coffee farmers on average are earning about USD 1.50 a kilo but the
same coffees have been known to fetch up to 200 pounds a kilo in some
London cafes. Low returns-decline in total coffee acreage to urbanization.

International coffee shops market the coffees under some names denoting
specific regions within Kenya meaning their use of Kenyan GIs is paying
them handsome dividends but not so for the poor Kenyan farmers who sell
the crop as a commodity.
Expected Challenges For GIs Use
The current value chain setup in the coffee industry in terms of marketing
may be hard to sell to, the idea of GIs; They may prefer the status quo to
remain due to obvious advantages.
The bulk of Kenyan coffee has seen a decline in quality, even as the country
goes branding; sustaining the quality may be a tall order especially so from
the thousands of rural based farmers with poor crop husbandry.
The low volumes of the crop (coffee) may not easily allow for differentiation
of the products due to volumes of scale during pulping, milling and
transporting the crop. This may however be dictated by the prevailing prices
if they can be maintained.
Demarcating the the GI zones could be contentious for those producers who
will feel left out.
The country does not have a long history of protecting GIs, some bodies (For
example INAO-France) may need to be created to oversee GIs certification.
Lots of awareness raising activities also needed in order to sell the idea of
GIs to the producers.
Cost of producing GIs and marketing especially abroad could be prohibitive.
Enforcement-especially abroad costly; Some Kenyan geographical names
are already being misused in certain countries.
Thanks for your attention!

Ahsante Sana! Merci Beaucoup!

To receive a copy of these slides/contact the presenter, please send an e-mail to:
<gmramba@kipi.go.ke> or <rambajeff@gmail.com>

Note: The views expressed herein are the authors views and are not necessarily the views of the
Kenya Industrial Property Institute nor of the Kenyan Government.