Jamaica's international renown for its reggae music, the legendary music icon Bob Marley, and track and field athletes is undeniable. So too is the fact that the island's brilliant sun, deep blue sea and white sand beaches continue to attract tourists from across the world to its shores.
Indeed, according to the Country Brand Index Jamaica ranks in the top seven brands for its beaches, sports and outdoor activities, and in the top three for rest and relaxation. But quite apart from Jamaica's obvious international visibility in music, tourism and sports, there are other areas in which Jamaica has received international acclaim – Appleton Estate Jamaica Rum (reportedly the leading imported rum in Canada and Mexico, it was awarded the Grand Gold Medal for 2007 by the Monde Selection International Institute for Quality Selections of Spirits and Liqueurs), Jamaica Blue Mountain coffee (one of the most expensive and sought-after coffees in the world), and a host of spices and seasonings that add unique flavour to any cuisine. These indigenous items all represent valuable elements of Jamaica's nation brand, which Jamaicans have been seeking to leverage in the global market.
As the recognition by Jamaicans of the country's brand value increases, so too has the realization that much has been and continues to be lost to genericism, piracy and infringement. The proliferation of Jamaican-style food products of non-Jamaican origin in foreign markets has been a cause for great concern by local producers and exporters who have found cans of Jamaican Ginger Ale from New Mexico, All Natural Jamaican Jerk Sauce from Massachusetts and The Jamaican Choice Scotch Bonnet Hot Sauce from Costa Rica in stores across North America.
Jamaican policy-makers in the post-TRIPs era have attempted to grapple with this issue by placing greater emphasis on the protection of geographical indications (GIs) in order to claw-back some indigenous Jamaican products and protect the Jamaica brand. Local producers, not confident that GI protection alone will solve all their issues, are beginning to strategically use the trade mark system more intensively in an attempt to recover ground lost to impostors. As a consequence the IP rights of authentic Jamaican products are being consolidated to increase their visibility and legal protection globally.
The newly concluded EU-Cariforum Economic Partnership Agreement (EPA) – an Economic Partnership Agreement between the European Community, its member states and Cariforum, concluded on December 16 2007 – with its TRIPs-plus provisions on GIs offers a beacon of hope for multilateral protection of Jamaican products. However, with the slate of increased intellectual property obligations under the EPA, the question is whether Jamaica can practically give effect to these multilateral commitments and successfully harness the Jamaica brand. For this to happen, a number of gaps in the local laws will need to be plugged and quickly.
Territorial protection
Enacted in 2004 the Protection for Geographical Indications Act (GI Act) signalled a new beginning for Jamaican agricultural and export sectors. The GI Act established protection for producers of goods that have a definable qualitative link with the geographical origin denoted by the indication. Under the GI Act "producers" include producers of agricultural products, persons who exploit natural products, manufacturers of products of industry or handicraft and traders in such products. Although GIs need not be registered in order to be protected, the Act provides for a registration system. A GI can be registered by any competent authority or producers carrying on an activity in the geographical area specified in the application with respect to the goods specified. Once registered, all producers of the product in question can use the GI as long as the definable qualitative link between the GI and the product exists.
The protection required by Article 22 of the TRIPs Agreement, already available in part in Jamaica through consumer protection laws and at common law, has been encapsulated and enhanced by the GI Act, which protects against misleading uses and acts of unfair competition in relation to GIs on natural products, agricultural products and products of industry or handicraft. The GI Act also provides additional protection to GIs for wines and spirits in accordance with Article 23 of the TRIPs Agreement, which obliges member states to provide the legal means for interested parties to prevent uses of a GI on a wine or a spirit not originating in the place denoted by the GI whether the use is misleading or not – the so-called additional protection. Effectively, even when the true origin of the goods is indicated or a GI is used in translation or accompanied by expressions such as "kind", "type", "style", "imitation", the use of a GI identifying wines for wines that do not originate in the place indicated by the GI in question or identifying spirits for spirits that do not originate in the place indicated by the GI in question is prohibited. It is important to note that the GI Act is confined to the minimum standards of the TRIPs Agreement. It therefore maintains the dichotomy in the level of protection granted to GIs for wines and spirits on the one hand, and GIs for other products on the other.
Under the GI Act deliberate, false and misleading uses of a GI in respect of any product, and deliberate improper uses in respect of wines and spirits constitute criminal offences that carry a prison term of up to 12 months and/or fines up to $1 million in the lower courts. In the Supreme Court offences are punishable by up to five years' imprisonment and/or a fine set by the court. Where the offender benefited from the offence a pecuniary penalty equivalent to the total value of the benefits derived by the offender from the offence also applies.
The hefty sanctions and penalties for offences under the GI Act raised expectations that the country's long-standing battle over products of foreign origin that dilute Jamaica's brand would be adequately addressed. However, without the additional protection being available in respect of GIs for products such as coffee, Ackee (a fruit that forms part of Jamaica's national dish, Ackee and Salt fish), pepper and spices, Jamaican producers are unlikely to gain much from the implementation of the GI Act. Regrettably, the GI Act is still not operational/ Jamaican producers continue to be undermined by unscrupulous foreign traders who typically describe their products as Jamaican or Jamaican-style accompanied by the true country of origin.
Trademark focus
Not all producers are willing to await the implementation of the GI Act or consider it a comprehensive fix to their problems with impostors. Recently a number of certification marks and collective marks have been developed and/or registered in respect of products of Jamaican origin, which could technically have also gained protection under the GI Act.
In December 2007 the Jamaica Exporters' Association (JEA) launched a certification mark as well as collective marks in relation to fresh produce, visual arts, clothing and agribusiness. The JEA, with about 230 member companies, sees its development of these marks as a strategy to combat the proliferation of Jamaican-style products on the market. The collective marks will be open for use by exporters and producers who are members of the JEA. The certification mark, which is to be used in relation to Jamaican Ackee, will be available through subscription to entities whose products meet the relevant certification criteria.
The Scientific Research Council (SRC) a government agency responsible for research and development in Jamaica followed the JEA's lead in February 2008 by launching a certification mark, which the SRC states will denote the safety and quality of authentic Jamaican products. The SRC develops technical standards and formulations for the production of various food and other products and sells these formulations to private producers and manufacturers for their commercialization. The certification mark will be available for use by private entities in connection with specific products that are produced to the standards required by the SRC.
Both the JEA and the SRC view certification marks as channels for enhancing the competitiveness of producers of authentic Jamaican products and giving greater visibility to the Jamaica brand. The marks all incorporate the colours black, green and gold representative of the Jamaican Flag.
Given that GIs possess characteristics and operate in a manner similar to certification marks and collective marks, it is not surprising that these forms of marks are being acquired in the absence of an operational GI Act. Both certification marks and collective marks operate under regulations, not applicable to ordinary trade marks, which make them good alternatives to sui generis GI protection. Certification marks indicate that the goods or services covered by the mark comply with standards established by the certifying body and, accordingly, distinguish certified from uncertified goods or services. Collective marks indicate a trade connection between particular goods or services and the association or group owning the mark; or that those persons using the mark belong to a specific association.
Jamaica is in effect protecting its GIs through the trade mark system by using in particular certification marks. A case in point is the Jamaica Blue Mountain, owned by the Coffee Industry Board, which is a registered certification mark in respect of coffee and coffee blends. The mark is open for use by all coffee producers whose production processes comport with the standards set by the Coffee Industry Board. Jamaica Blue Mountain is also a protected designation of origin in the EU and a registered certification mark in the US.
Plugging the gaps
As a member of Cariforum, Jamaica is among the group of Caribbean countries that concluded the Economic Partnership Agreement between the EC, its member states and Cariforum on December 16 2007. The EPA is scheduled to be signed by June 2008.
Compared with other forms of IP rights, the EPA has robust provisions on GIs that are outlined in Article 7 of Chapter 2, Title IV of the EPA. The EPA goes beyond Articles 22 and 23 of the TRIPs Agreement by requiring uniform protection against false and misleading uses, and non-misleading uses, irrespective of the class of goods in relation to which the geographical indication is used. This provision is likely to be welcomed by Jamaican producers. As in the TRIPs Agreement, there is a prohibition on the registration of a GI, which, due to a pre-existing trade mark's reputation, renown and length of use, is liable to mislead the consumer about the product's true identity. This will certainly protect certification marks like Jamaica Blue Mountain but could also restrict the number of GIs that can be clawed back from entities that have already acquired trade mark rights in a Jamaican GI through use or registration.
In addition to the usual exemptions in relation to GIs that have become generic, the EPA provides an exemption for terms that are identical with the name of a plant variety or animal breed existing in the signatory's country as of the date of entry into force of the EPA. Broader exemptions may further limit the number of GIs that can be protected.
Cariforum states are obliged to submit a list of prospective geographical indications originating in the Cariforum states to the consideration of the Cariforum-EC Trade and Development Committee for discussion and comment within six months of the Agreement's entry into force. Additionally, parties to the EPA must cooperate with the Cariforum-EC Trade and Development Committee for the development of GIs in Cariforum states, and must establish a system of protection of GIs in their respective territories by January 1 2014.
The delayed implementation of the GI Act has in effect given producers an opportunity to lobby for uniform protection for GIs in relation to all agricultural products. The EPA provisions will no doubt make their task easier. The delay may also account for the focus on certification marks and collective marks, which, if employed appropriately, will only serve to bolster the protection of valuable GIs. It also gives Jamaica a chance to develop a national branding strategy incorporating agricultural products and to reflect the increased GI protection obligations under the EPA in its local laws. It is to be hoped that all the gaps will be plugged well in advance of the 2014 deadline and Jamaica's brand value in respect of authentic food products will significantly improve globally.
Originally published in Managing Intellectual Property, 2013.
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