Traditional knowledge

When the latter changed its trademark law to comply with the European Community directive on the harmonisation of trademark laws in Europe, South Africa followed suit to some extent, and there are therefore similarities between the trademark laws in various countries in Europe and our current trademark law (Act 194 of 1993).

Perhaps one area where South African jurisprudence lags behind its European counterparts is the issue of confusion arising from similar marks registered in respect of pharmaceuticals. The traditional view that confusion must be shown to occur at the professional level (doctors and/or pharmacists) has yet to be seriously challenged in our High Courts despite a seeming tendency in other jurisdictions to recognise patients as users.

Traditional or indigenous knowledge

One area where real developments are taking place in South African IP law is the government’s plans to provide protection for indigenous traditional knowledge by amending the Trade Marks and Copyright Acts. There is little doubt that the protection of traditional knowledge is of paramount importance to the cultural health of society, and that protection needs to be enshrined in law, but whether the two acts above provide the right vehicle for doing so is the subject of fierce debate in South Africa.

The Traditional Knowledge Bill seeks to amend the Trade Marks Act by, inter alia, providing protection for “traditional term or expression”, namely, a term or expression “recognised by an indigenous community as a term or expression having an indigenous origin and a traditional character and which is used to designate, describe or refer to goods or services”.

“One area where real developments are taking place in South African IP law is the government’s plans to provide protection for indigenous traditional knowledge by amending the Trade Marks and Copyright Acts.”

To treat traditional terms and expressions as trademarks may be jurisprudentially uncomfortable and technically difficult. The most obvious problem is that a traditional term or expression may, by its very nature, be completely descriptive. Distinctiveness is, as we all know, a requirement for a valid registration of a trademark, which may lead to the disqualification for registration of certain categories of traditional terms or expressions.

Alternatively, and a compelling argument for protecting traditional knowledge by way of a sui generis law, is the danger of diluting the current interpretation of distinctiveness in an attempt to give effect to the amended law. Apart from chipping away at the raison d’être of trademark law, lowering the bar for distinctiveness may render enforcement ineffective.

Nowhere is this dichotomy more apparent than in the definition of a geographical indication in the bill.

Geographical indication means an indication that identifies goods as originating in the territory of the Republic or in a locality of that territory, and “where a particular quality, reputation or other characteristic of the goods is essentially attributable to the geographical origin of the goods”, including natural and human factors. This phrase immediately disqualifies the protection of such an indication as a trademark in the original sense.

Sections 10(2)(c) of the Act 194 of 1993 of the unamended Trade Marks Act precludes the registration of a mark that consists “exclusively of a sign or indication which may serve in the trade to designate geographical origin” unless the mark has in fact become capable of distinguishing within the meaning of Section 9 as a result of the use made of the mark.

Unless, therefore, the geographical indication has been used by the ‘indigenous community’, the amendments proposed by the bill may render the Trade Marks Act contradictory and its interpretation uncertain.

It is the government’s intention to protect traditional knowledge and, where appropriate, seek compensation for its exploitation. The Trade Marks Act is essentially there to protect traders who exploit their brands. Indeed, our act, in line with most trademark laws elsewhere, actively encourages the use of the protected brand on pain of expungement.

If an indigenous community seeks merely to protect its traditional terms and expressions from exploitation, such terms can be expunged. I am not sure that this is what the government intends.

Attempts to persuade the bill’s proponents to draft a sui generis law have failed, although it has been referred by Parliament to various organisations for refinement. Since the protection of traditional knowledge is extremely important, one hopes that these refinements will eliminate the contradictions imposed by the bill on the Trade Marks Act.

Brian Wimpey is a director in the trademark department at DM Kisch Inc. He can be contacted at: brianw@dmkisch.com