South Africa: Draft legislation to protect traditional knowledge
13/06/2008

Introductory remarks
The need to provide protection for the indigenous knowledge of communities, and the difficulty of finding an appropriate mechanism for providing such protection, have been intensely debated in recent years. One problem is that there is no generally accepted definition of Indigenous Knowledge (IK) or Traditional Knowledge (TK), nor clarity on the difference between these two concepts. Another problem is that there is no consensus on the manner in which IK/TK is to be protected.

WIPO (the World Intellectual Property Organisation) itself has grappled with the problem and has made a significant shift in its approach. In the WIPO Model Provisions on the protection of TK (1985), no definition for TK was put forward but folklore seemed to have been regarded as the essence of TK. In a subsequent WIPO discussion document (2002), an encompassing and more specific definition of TK is proposed, namely
“…traditional knowledge is knowledge encompassing traditional and tradition-based literary, artistic or scientific works; performances; inventions; scientific discoveries; designs; marks, names and symbols; undisclosed information; and all other traditional and tradition-based innovations and creations resulting from intellectual activity in the industrial, scientific, literary or artistic fields”.

The significance of this shift in approach is that TK is now acknowledged as including all recognised species of IP, also inventions and marks.

The South African Government published a Policy Document reflecting a novel approach on the manner in which protection could be provided. It proposes that TK should be treated as IP and should be protected by introducing appropriate provisions into existing IP legislation. The policy thus envisages integrating the different manifestations of TK into existing IP laws by introducing appropriate provisions to protect expressions of TK within the conceptual framework of each statute.

The Intellectual Property Amendment Bill, 2007 will introduce amendments to four IP statutes, namely the Performers’ Protection Act, 1967; the Copyright Act, 1978; the Trade Marks Act, 1993; and the Designs Act, 1993.
The Intellectual Property Amendment Bill
A national framework is established to administer the protection system, including a National Council for Traditional Intellectual Property, with appropriate responsibilities, duties and functions; a National Database for Traditional Intellectual Property, incorporating separate sections for the different species of TK; and a National Trust Fund for Traditional Intellectual Property, to administer income derived from the exploitation of TK.

The National Council will consist of 12 members appointed by the Minister (of Trade and Industry) after consultation with other ministers, with local government, with the association of traditional healers and other relevant bodies. The Council will be broadly representative of the different cultures of South Africa, and will have as members persons with knowledge and patronage of traditional cultures and values of indigenous communities and of traditional performing arts, and persons with knowledge and expertise in intellectual property law. The Council must advise the Minister and the Registrars of IP on all matters concerning TK.

The National Trust Fund will be administered by the Registrars of IP who shall be responsible for the promotion and preservation of traditional IP, including the commercialisation and exploitation thereof. Income derived from such use, including all royalties payable, shall be paid into the Trust Fund to be applied to the benefit of indigenous communities. Any indigenous community may also establish a legal entity or other enterprise to promote or exploit traditional IP.
The Amendment Bill will introduce into the Trade Marks Act provisions to provide for the registration of a traditional term or expression as a trade mark. A “traditional term or expression” will be defined to mean 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, and will be registrable as a trade mark if it is capable of distinguishing the goods or services of an indigenous community from the goods or services of another community or person. The registration must be in the name of the indigenous community or a person or body authorised to act on its behalf.

A traditional term or expression will also be capable of constituting a certification mark, a collective mark or a geographical indication.

An “indigenous community” is defined as any community of people currently living within the borders of South Africa, or which historically lived in the geographic area currently within the borders of South Africa.

Once a traditional term or expression is accepted by the Registrar for registration as a trade mark, the National Council must be notified. The Council may also be called upon for advice if a mark, which forms the subject of a trade mark application, appears to contain a traditional term or expression.

After registration, the indigenous community which owns the registration will not be entitled to restrain a person from continuing to use the mark if such use commenced prior to the commencement of the Amendment Act, nor to restrain a member of the indigenous community from using the mark, provided licence fees are paid. The amount of the licence fee is determined by agreement between the user and the Trust Fund, or by collecting societies representing these parties, or, in the absence of agreement, by the court.
Esmé du Plessis
Consultant
Adams & Adams
edp@adamsadams.co.za