September 17, 2015 4:10PM

Protecting Scotch the Wrong Way in Africa

The African Intellectual Property Organization (OAPI) has reportedly accepted the registration of “Scotch” as a geographical indication for whisky “made in Scotland from water, cereals and yeast, and matured for at least three years.”  It’s unclear what if any commercial consequences this move will have considering that the 17 West African countries of the OAPI are not major consumers of Scotch.  However, it does have significant importance as a step forward in the attempt to use GI protection to secure excessive privileges for Old World producers in foreign markets.

Perhaps the word “Scotch” does indeed refer only to whisky made in Scotland.  The Scottish producers of scotch certainly think so.  In no uncertain terms, the spokesperson of the Scotch Whisky Association says that GI registration will protect consumers from “fakes.” 

But the purpose of GI protection is generally not to fight against fakes (fraud is already illegal everywhere) but to prevent the use of place names as generic descriptions of products.  Scottish producers want to make sure that no where on earth are consumers allowed to think that “Scotch” simply means whisky made according to the methods historically used in Scotland. 

Consider the example of Champagne.   To some, champagne is a word that means bubbly white wine.  To others, it is a name for wine made near Epernay, France according to traditional methods.  French champagne producers have been fighting long and hard to claw back the word and prohibit its use as a generic term.

But there are many, many geographic words that are used as generic descriptors.  Consider Belgian waffles, French fries, Philly cheesesteak, or even Valencia oranges.  Despite being the names of places, these words tell you what the product is like, not where it came from.  

There are two big policy questions surrounding GIs: (1) whether a geographic term deserves protection and (2) what actions are prohibited once a GI is protected.  Let's consider the second question for now.

Whenever a government decides to control the use of language to protect commercial interest, it runs the risk of overprotecting that interest at the expense of the public.  This is a basic problem for trademark law, where to prevent excessive protection, trademarks are not protected if they are merely descriptive terms, and the test for infringement of protected marks hinges on whether there is a likelihood of confusion as to the source of a product.  In the United States, GIs are generally protected under trademark law.

The OAPI’s GI protection laws are modeled after the European system, which does not employ those kinds of limitations.  Consider this provision of the OAPI’s GI rules:

it shall be unlawful to use, for commercial purposes, a registered geographical indication, or a similar designation, with respect to the products specified in the Register or similar products, even if the true origin of the products is indicated or if the geographical indication is in the form of a translation or is accompanied by terms such as “kind”, “type”, “make”, “imitation” or the like. [emphasis added]

In other words, use of the word “Scotch” is now illegal even if there is zero possibility that a consumer would think the whisky comes from Scotland because the bottle says “Pecos Bill's Scotch-style Texas Whisky.”  This kind of rule does not benefit consumers in any way at all, but it does further the interests of Scottish whisky makers at the expense of common, accurate speech.

Why should this matter to anyone outside of Scotland and West Africa?  Because it is part of a very troubling movement within international economic policy. The European Union is using free trade agreements to pressure countries to adopt this excessive form of GI protection and to protect a list of specific GIs even if they are generic terms in that country.  These include wine names like champagne, port, and sherry as well as numerous generic cheese names like parmesan, asiago, feta, and gorgonzola. 

As the United States negotiates the Transatlantic Trade and Investment Partnership with the EU, it’s important for American policymakers to understand that Europe’s approach to GIs is protectionist and incompatible with the goal of free trade in a globalized economy.  This is true even if you think "Scotch" can only be made in Scotland.