Special Feature : Traditional Knowledge vis-a-vis Modern IPR

Trademarking traditional knowledge Lessons from the Rusie Dutton case Vilailuk Tiranutti

Disputes over IPRs and their inadequacy in protecting traditional knowledge (TK) are common. The trademarking of the centuries-old, Thai-style exercise - Rusie Dutton - by a Japanese individual showcases how valuable TK is often subject to misappropriation by private enterprises. Three significant messages emerge from this study. First, trademarks of TK have consequences on indigenous society as detrimental as those caused by patents. Second, the assumed benefits of IP protection may have to be reassessed when it comes to the privatization of public knowledge. Finally, effective protection of TK from private exploitation is an urgent need, although finding solutions may be a long and on-going process.

Introduction

D Ms. Vilailuk Tiranutti Researcher The International Institute for Trade and Development (ITD) 8th Floor, Vidhayabhathana Bldg Chulalongkorn University Chula Soi 12, Phayathai Road Banghkok 10300, Thailand Tel: (+66-2) 216 1894 7, ext 113 Fax: (+66-2) 216-1898 9 E-mail: [email protected] [email protected]

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isputes over intellectual property rights (IPRs) and TK often surround patents of indigenous genetic resources and medical knowledge. These disputes have overshadowed other abstract forms of IPR protection of public know-how, such as trademarking traditional knowledge for private profits, even though such protection too has adverse impacts on indigenous groups. Advocates of IPR often claim that IPR rules protect innovators’ rights to their ideas and foster creativity in society. While this argument may hold some truth in the case of patents, the same cannot be said of the trademarking of traditional knowledge (TK), as such IP carries no novelty and is simply

a form of plagiarism of knowledge and names that have long been widely available in the public domain. The trademarking of the centuriesold, Thai-style exercise - Rusie Dutton by a Japanese individual is a case in point. It showcases how valuable TK of indigenous people is often subject to misappropriation by private enterprises. In May 2006, the news of Japanese entrepreneur Masaki Furuya applying for two trademark registrations for his service - a Thai body-twisting exercise school - and product - a selftaught Thai exercise book/magazine under the trademark Rusie Dutton spurred an outcry among the Thai public. Many saw the case as yet another IPR violation of Thailand’s traditional

Special Feature : Traditional Knowledge vis-a-vis Modern IPR knowledge, since the name Rusie Dutton or ‘Hermit Body Twists’ refers to the posture-based, traditional Thai yoga exercise, which has a long history in Thailand, dating as far back as the reign of King Rama I (A. D. 1782-1809). Rusie Dutton is one of the many IPR disputes Thailand has encountered in recent years, the two most controversial cases involving Thai jasmine rice. The first was a patent by US-based Doigeut-Dishman Rice Company for its new rice strain ‘Jasmine 85’,derived from Thailand’s Khao Kao Dok Mali 105. The second case was a trademark registration of the name ‘Jasmati’ by yet another US-based firm, Ricetec, to be used with its own developed rice strain. Though the name was misleading since Jasmati rice had no relevance to Thai Jasmine rice, the trademark was granted to the company in 1993 by the US Patent and Trademark Office (USPTO). Biodiversity and TK are among the many valuable treasures of the developing world; yet the current IP systems have, on several occasions, failed to provide adequate measures to protect the interests of developing countries. Discussion of TK protection often encircles the issue of the patenting of ‘new inventions’ that are derived from knowledge that has long existed in indigenous communities. Little has the discussion been focused on the misappropriation of TK through trademark registration, even though this issue is as important as the issue of patents. Many legal experts downplay the significance of such IP disputes when community treasures have been misappropriated by the private sector. Some contend that the public often misunderstands the concepts of IP protection and cannot distinguish between trademarks, patents, and copyrights. These experts reject the notion shared by many in the public that once any kind of IP registration is granted to an individual, no one else is entitled to the use of that particular product or knowledge that has been registered. The experts like to stress that if the registration is of a trademark and not a patent, non-commercial use of the products or services under that registration is not prohibited. They also point out that the approval of a trademark name doesn’t prevent others from using that name.

Definitions Traditional Knowledge (TK): This refers to the ‘content’ of know-how that is transmitted down generations through traditional means. TK has a distinctive link with the community that identifies with it, to which local custom and law may apply. TK may be considered sacred or culturally sensitive. Examples are mental inventories of local biological resources, agricultural, environmental or medical knowledge. These forms of knowledge can also be associated with traditional cultural expressions (TCEs) or expressions of folklore, such as songs, chants, narratives, motifs and designs. [“Booklet No. 2: Intellectual Property and Traditional Knowledge”, World Intellectual Property Organisation (WIPO). http:/ /siteresources.worldbank.org/EXTINDKNOWLEDGE/Resources/WIPO_ Guidelines.pdf] Trademarks: “A mark used or proposed to be used on or in connection with goods to distinguish the goods with which the trademark of its owner is used from goods under another person’s trademark”. There are several kinds of ‘mark’, namely, trademark, service mark, certification mark, and collective mark. Whereas a trademark is a mark for goods, service mark by its very name represents the service on offer. A certification mark is used in connection with goods or services to certify the origin, composition, method of production, quality, nature and other characteristics of such goods or services. A collective mark, on the other hand, refers to a trademark or service mark used by companies or enterprises of the same group or association. [Thailand Trademark Act B./E. 2534] Patents: “Subject to Paragraph 2 and 3, patents shall be available for any inventions, whether products or processes, in all fields of technology, provided that they are new, involve an inventive step and are capable of industrial application.”[The World Trade Organisation Trade-Related Aspects of International Property Rights (TRIPS), “Section 5: Patents, Article 27, Paragraph 1”]

Prohibition of the use of the name is only applicable to classes of products registered under that trademark name. Goods of different categories can be promoted and sold under the registered trademark. In the case of the Rusie Dutton dispute, this means that others can still practise the Rusie Dutton exercise, or use the term Rusie Dutton to promote their products or services, provided that the products or services are of different categories from the ones registered by the trademark holder, in this case being the service of teaching the Thai-style yoga class and the product of self-taught Thai yoga books and magazines, both of which were registered under Furuya’s Rusie Dutton trademark. The truth, however, is that, even though the use of such product or service is still possible, the scope of its availability will inevitably become more limited than if no IP protection had been granted. A non-commercial use of Ru-

sie Dutton may be possible, but users also run a risk of being charged with infringing on the trademark owner’s rights if the owner considers that the non-commercial use dilutes the value of his trademark. Dilution could result from use of the trademark as a common name for a whole category of products, or by making fun of the trademarked product. Thus, others who may use the name Rusie Dutton as their trademarks will invariably face legal battles with the trademark holder when this common name is registered as a private property. Consider the case of India. Today, over 40 ancient Indian names and sciences have become registered trademarks of private enterprises. Names such as Vastu (the traditional Indian architectural form), Veda (the oldest Indian Sanskrit books), Ayurveda (ancient medical entreaties), and Gayatri (a religious chant) have been registered as trademarks by private organizations in Germany.1

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Special Feature : Traditional Knowledge vis-a-vis Modern IPR Figure 1: Masaki Furuya’s Rusie Dutton website

Source: www.rusiedutton.com In the case of the word Vastu, the problem came to light when a German Vastu scholar Marcus Schmieke was taken to court by a Germany-based company, Samhita, for using Vastu in his academy name. Schmieke later had to change the name from ‘Vastu Academy’ to ‘Vasati’. This demonstrates the seriousness of the problem of granting trademarks of common words to private individuals. If Thailand does not attempt to seriously resolve such problems and straighten the rules on IPR protection of traditional knowledge and genetic resources, problems such as those faced by India will emerge, by which time it may be too late for Thailand to take any action.

Distinctiveness One of the most important requirements of a registrable trademark, as specified in Section 6 of Thailand Trademark Act B.E. 2534, is that a trademark must be distinctive. Section 7 also states that a distinctive trademark is ‘one which enables the public or users to distinguish the goods with which the trademark is used from other goods.’ This requirement is in line with that specified in Article 15, Section 2 of the WTO Trade-Related Aspects of Intellectual Property Rights (TRIPS), which states: “Any sign, or any combination of signs,

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capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable of constituting a trademark … Where signs are not inherently capable of distinguishing the relevant goods or services, members may make registrability depend on distinctiveness acquired through use.” In short, the two principles of trademark registration are distinctiveness and avoiding confusion. Since the Thai-style yoga has long been wellknown in the Thai public domain, registering this pubic knowledge as a private trademark or service mark under a name that resembles one long associated with this particular knowledge offers no distinctive character to the trademarked product or services. In such a case, the Rusie Dutton trademark or service mark is misleading the public into thinking that Furuya’s product and service are distinguishable from what has long been widely available among the Thai public. Some may argue that the somewhat unique spelling of the term Rusie Dutton by the Japanese trademark holder offers distinctiveness to his trademark. In response to this point, a close consideration of the term used for the trademark is required, which will be discussed below.

z

The seemingly Western-style spelling of the word Rusie Dutton may imply Furuya’s intention to differentiate his trademark from the common name used for the Thai bodytwisting exercise. The problem here is the lack of a widely-used, widely-accepted standardized system of romanization of the Thai language, which could help examiners identify whether Furuya’s trademark differentiates from, or replicates, the name of Thai traditional knowledge.

Even though the Royal Thai General System of Transcription (RTGS) is the official system for rendering Thai in the Latin alphabets, its use remains limited and inconsistent, perhaps because the system involves complicated spelling that is not always an actual oral representation of a Thai word, for example, the use of ‘Bh’ to represent the sound ‘P’, or ‘Th’ for ‘T’. Consequently, Rusie Dutton can be written in various styles - Rue See Dat Ton, Rue See Dut Ton, or Rue See Dad Ton - depending on the writer. The lack of a consistent and widely used system of romanization of the Thai language makes it difficult to determine what the official romanized spelling of the term should be, and whether Furuya’s trademark is simply a replica of the Thai word or an innovative idea of his own. This lack of an official romanized spelling may lead to a conclusion that Rusie Dutton is a distinctive word with creativity in its spelling that should qualify it for a trademark. z However, in order to determine whether the word Rusie Dutton has a distinctive character, one must also take into account the Japanese spelling of the word, which has also been registered as a trademark. Unlike the Thai language, Japanese has a uniform rule on the spelling of foreign words, using the Katagana letters to represent how a foreign word sounds in Japanese. The Japanese spelling of the word is also a registered trademark. Since it is simply an exact sound representation of the equivalent word in the Thai language, the trademark is deemed to have no distinctive value and thus

Special Feature : Traditional Knowledge vis-a-vis Modern IPR should not qualify for registration. In addition, the fact that Furuya’s Japanese trademark is simply a translation of the Thai word confirms that the romanized version of his trademark was also created without any intention to differentiate it from the Thai word that represents the Thai-style yoga exercise. Hence, both Rusie Dutton and the Japanese version should not be entitled to a trademark registration. Moreover, even if the word Rusie Dutton is not an exact representation of the equivalent word in Thai, designing a trademark to ‘sound’ or ‘look’ like a mark of someone else is still classified as a violation of the trademark law. Consider a Thai case of an application for the ‘GIAN FERRENTE’ trademark to be used in Thailand for goods in classes 25 and 18, particularly shoes, belts, dresses and handbags. This trademark bears great resemblance to the famous international trademark ‘GIANFRANCO FERRE’ used for the same classes of products, though the word is spelled differently. Due to such close resemblance between the two names, the ‘GIAN FERRENTE’ trademark was rejected by Thailand Trademark Board on the ground that the application was filed in bad faith with an intention to mislead the public into confusion, by possibly making the public perceive that their products are those of the international brand2. Though the Central Intellectual Property and International Trade Court revoked the Trademark Board’s decision, the Intellectual Property and International Trade Division of the Supreme Court upheld the Trademark Board’s decision on rejecting the application of the ‘GIAN FERRENTE’ trademark and not allowing it to be registered. This case offers a precedent that registration of trademarks that aim to resemble well-known marks cannot be approved. The question, however, is whether this rule can apply to ‘common names’ especially TK names, most of which have not previously been registered as trademarks. Another concern is how the Japanese law interprets the registration of ‘common names’ of TK as trademarks. One point to which attention must be paid is whether recognition can be given to names that are

not only common universally but also to generic names within just one country. International cooperative efforts are needed to rectify this issue. Because overturning the granting of IPR registrations is an extremely time-consuming and costly process, especially for resource-stricken developing countries, Thailand should make every effort to put in place defensive mechanisms that will deter the granting of inappropriate patents or trademarks, although this process is not always possible, especially in countries such as Japan and the USA, where applications are approved before public announcement is made to allow others to object their applications. To avoid this long process of dispute settlement, several approaches to prevention of misappropriation of traditional knowledge have been proposed, although no unified outcome has been reached. Part II explores various ways to solve this problem.

Protecting TK Defensive and positive protection One possible method to protect TK is to register the knowledge in public databases. This so-called ‘defensive protection’ is aimed at preventing misappropriation of TK by the private sector. The argument supporting this idea is that databases will allow authorities to investigate “prior art”4 when reviewing patent applications to determine whether the latter fulfil the criteria of novelty and inventiveness necessary for being granted IP protection. Registration will also promote documentation, preservation and maintenance of TK, and identify communities that might be entitled to benefit-sharing from its use. Organizations such as the American Association for the Advancement of Science (AAAS) have produced manuals on using TK databases to protect indigenous people’s interests5. India has also established the Traditional Knowledge Digital Library (TKDL). Despite its benefits, problems with defensive protection still persist. One of the major issues is how to identify beneficiaries of the benefit-sharing from the use of public knowledge. This is especially true when one notes that

most knowledge has been passed on from generation to generation, and from one community to another, without any prior ownership claim. It may thus be difficult to identify individuals or groups of people who are entitled to claim the benefits. Some also see the defensive measure as a double-edged sword, since putting TK in the public domain through registration in databases can provide increased access to TK for the private sector. Third parties would be able to exploit and appropriate TK without having to interact directly with providers of the knowledge. This is true especially when there is no appropriate legal protection of indigenous databases in place, and databases alone are not considered a legal IPR protection measure. Hence, registry and databases do not necessarily increase recognition of indigenous people’s rights over their knowledge, nor will these measures help inform the indigenous of how their knowledge is being used by others6. Another problem with the registration of TK is the issue of ownership. Since TK is considered collective property, there is no incentive for individuals to register their community knowledge in the database, as the right to the knowledge cannot be privately owned for individual use. This disincentive may be one of the explanations why recent TK registration rates in Thailand have fallen sharply from the comparatively high rates in earlier years, as seen in Figure 2. In addressing the weaknesses in ‘defensive protection’, the ‘positive protection’ approach promotes recognition of TK to be the right of the community connected to that knowledge. Recognizing TK to be cultural patrimony of indigenous people will establish obligations between the State and indigenous peoples, and will create a measure of protection against third parties, since cultural patrimony is recognized as being inalienable and indefeasible. In other words, “positive protection” prohibits commercialization of traditional knowledge in a way that would grant monopolistic rights to third parties. Additionally, benefits generated by the use of TK must be utilized by the recipient indigenous peoples to strengthen and protect their knowledge

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Special Feature : Traditional Knowledge vis-a-vis Modern IPR

Case Profile: Rusie Dutton or ‘Hermit Body Twists’ refers to the traditional art of body twisting exercises, comparable to India’s Yoga, that has existed in Thailand for at least 200 years. Japanese entrepreneur Masaki Furuya submitted two trademark applications under the name ‘Rusie Dutton’ spelt in both English and Japanese letters. The first application, submitted on 24 February 2006, was for prints, including books and magazines. The second application, submitted on 17 March 2006, was for his service of teaching the public the Thai body twists, as well as of other activities related to this art of body twisting. His business was established as a non-profit organization, as stated on his website (Figure 1). The Japan Patent Office (JPO) approved these applications and allowed the public a chance to object to the JPO decision within 60 days after the approval date. These periods ended respectively on 29 May and 17 June 2006 for the two trademarks. On 26 May, Thailand’s Ministry of Commerce submitted an objection to the approval of the first trademark, and is now awaiting the JPO response.

Rusie Dutton Book (with DVD) by Masaki Furuya

‘Rusie Dutton Diet’ book by the same author

Thailand’s Department of Intellectual Property (DIP) contested the JPO’s approval of the trademark applications on the ground that Rusie Dutton is a common name which, according to both Japanese and international law, cannot be registered as trademark. Another reason is that international and Japanese property laws prohibit registration of widely recognized goods and services without innovation. An official at the DIP stated that no written objection was submitted to the JPO in the case of an earlier application for the Rusie Dutton trademark by Koji Komiya, who submitted the trademark application on 8 April 2005 for a variety of products such as cosmetics, health food, records and media related to yoga, information provision services, translation services, massage class, and religion class3 etc. Although his application was submitted earlier than that of Furuya, it has not been approved by the JPO and therefore, no action can be taken against the application, according to the official. Masaki Furuya’s message posted on his Rusie Dutton website “To my dear Thai people; Needless to say, you can use the “Rusie Dutton” anytime, anywhere on this planet, of course you can use in Japan freely. We will teach Thai people living in Japan without fee,and after the graduation, can introduce you to many jobs! Our trademark are only for the very limited categories of business by Japanese people. And the main purpose of it is the quality control and protect the traditional and “pure” Rusie Dutton against “no heart, no moral people”. We will keep on trying our hardest to make this your “good traditional exercise” popular, and be loved in Japan. And It will be very, very happy of us to contribute Thai culture, Thai-food, massage, muay-thai and so on. Khopun Khrap!”

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Special Feature : Traditional Knowledge vis-a-vis Modern IPR Figure 2: Registration of traditional knowledge notifications in Thailand

2,000 Number of Registration

base in a manner that secures equitable sharing both within and between generations7. Both defensive and positive protections have their benefits and drawbacks, although the report by the United Nations University advocates an adoption of positive protection, arguing that register and databases can subject indigenous communities to greater exploitation through misappropriation of their now widely available, registered TK. The choice, of course, belongs to each country.

1,767

1,687

1,500 1,000

350

500 2003

2004

Increase funding, personnel and legal traininginIPR Lack of funding, personnel and essential skills, especially in international trade law and the English language, have hindered the Department of Intellectual Property (DIP) from effectively taking 1,767 both defensive and offensive 1,687 measures internationally to seek IPR protection of Thai TK. An increase in resources for all three areas is urgently needed. Inadequate human resourc350 make searching for es within the DIP 203 possible violations of Thai IPRs worldwide difficult to achieve. Foreign language skills are also 2006 a necessary ele2003 2004 2005 ment for an effective defence of the country’s Year IPRs. The Patent Cooperation Treaty (PCT) can be an effective tool for monitoring patent registration worldwide, in that its process of filing an international patent application makes a patent search for examination easier and more accessible. Nonetheless, a DIP official stated that the filing process would require a good level of English competence, especially in the field of international trade law, and Thai officials still require adequate training in both areas.8 It must also be noted here that Thailand has yet to become a PCT member and the PCT is only a patent filing (not granting) system. In addition,

2006

Year

Domestic reforms needed Apart from international advocacy for the protection of indigenous people’s TK, domestic efforts to prevent its misappropriation for private profits are also essential. Some of the kinds of efforts needed are outlined here.

2005

203

Source: ‘Traditional Knowledge Registration Statistics’, Thailand Department of Intellectual Property http://www.ipthailand.org the PCT covers only patents and not trademarks, which does not solve the problem of misappropriation of TK names for private use. On the other hand, the Madrid System for the International Registration of Marks enables applicants to register their trademarks internationally. However, as in the case of the PCT, Thailand is currently not a member of the Madrid Agreement. If both systems are implemented in Thailand, a larger number of experts, staff and examiners will be required. Hence, unless greater financial and human resources are allocated to the IPR protection task force, it is difficult to foresee how international violations of Thai TK can be deterred. Cooperate with NGOs Because of the severe lack of funding and personnel, the government must seek cooperation from other stakeholders to keep a close watch on IP registrations worldwide. While close cooperation among various government departments is essential, as in the Rusie Dutton case, civil society groups can be an important alliance for this mission. Unfortunately civil society and nongovernmental organizations (NGOs) in Thailand have often been negatively perceived as "traitors" or "foreignfunded,nation-selling organizations", despite the fact that NGOs are simply a social agent of a democratic system – an agent whose role is to bring out so-

cial debates to the public. Many NGOs understand the needs of the poor very well, given their grassroots-based works. NGOs such as the MS Swaminathan Research Foundation (MSSRF) in India created the Farmers' Rights Information System (FRIS) database, which is linked to the Community Gene Bank (CGB). The system collects seed samples of farmers’ varieties of different crops in certain parts of India where MSSRF works with local communities in livelihood-linked conservation. Such a database plays a crucial role in documenting traditional knowledge, which will be useful in examining IPR applications that may illegitimately use TK for private profits. Therefore, the works of NGOs should be supported rather than discouraged; and closer alliance between the government and the NGOs is necessary for effective IPR protection. Moreover, in the age of globalization, civil society groups also have extensive international networks that function as IPR watchdogs, guarding the interests of one another’s countries and local communities. Organisations such as GRAIN (www.grain.org), Biothai (www.biothai.net), and Intellectual Property Watch (www.ip-watch.org) are but a few NGOs working collectively to take actions against misappropriation of community IP. Such extensive networks are valuable assets for the Thai government in safeguarding the nation’s interests in IPR. Mistrust between NGOs and the government have result-

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Special Feature : Traditional Knowledge vis-a-vis Modern IPR ed in ineffective implementations of measures that could have prevented many cases of international IPR violation from happening. Thus a change in the civil society discourse in Thailand is an urgently needed element of effective safeguarding of Thai IPR. Encourage TK registration In order to utilize the existing international IP system to protect TK, Thailand must adopt at least one defensive protection measure right away. The measure involves creating databases for TK documentation, because many IP systems require that TK be documented in written form in order to be considered as prior art. This is to allow easy database search when a patent application is submitted. Databases on TK have been created in several developing countries. Venezuela has developed the Biozulua Database, which contains information and data of Venezuelan indigenous communities on traditional medication, ancestral technologies and TK on agriculture and nutrition.9 India has made efforts to document its own indigenous knowledge by creating the Traditional Knowledge Digital Library (TKDL). TKDL was a result of India’s five-year fight to overturn two patents registered in the USA and Europe, which were based on Indian TK of the use of neem and turmeric for medical purposes. After its success, various government institutes in India have collaboratively created the TKDL which documents information in 14 Ayurvedic10 texts. To date, there are approximately 36,000 formulations that have been transcribed in patent application format.11 Through the process of the TKDL creation, India has developed an innovative TK resource classification system, adapted from the existing IPRs regime, to offer a distinct classification system to TK documentation. India’s creation of a TK library is evidence that developing countries too can effectively safeguard their own IP without having to always rely on an enormous national budget, like the $ 1.404 billion budget of the US Patent and Trademarks Office (USPTO) in 2004.12 Even though developing countries cannot afford such a substantial budget size, protection of their own IPR interests is not impossible.

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Efforts to document TK have started in Thailand. The Department of Intellectual Property is liaising with several ministries, such as the Ministry of Public Health’s Department for Development of Thai Traditional and Alternative Medicine, the Ministry of Culture and the Ministry of Natural Resources and Environment to create a TK database. But progress has recently stalled, partly due to differences between each ministry’s information management system. In addition, a joint decision on whether to take a defensive or positive protection approach is yet to be made. Some officers are concerned that publicizing TK may cause more harm than good to indigenous communities. However, since the current IP system does not recognize the positive rights of community members as TK holders, registries and databases of TK become a necessary measure to protect TK from misappropriation. Thailand should seek close cooperation with India and other developing countries to obtain technical assistance on how to document TK and genetic resources. Additionally, local communities can also play an important role in documenting local genetic resources and TK. The ‘Thai Baan (Villagers’) Research’13 by north-eastern villagers who were affected by the construction of the Pak Mun Dam in Ubon Ratchathani province is an excellent example of how community members can effectively record genetic resources and TK that exist in their communities, such as plant varieties, fish species and fishing gears. Allowing communities to actively participate in the database project can create a sense of ownership and empower the communities. Lessons from Venezuela’s Biozulua database, India’s TKDL, and the ‘Thai Baan Research’, can help Thailand improve its disappointing record of TK registration in recent years. But apart from documenting TK in databases, issues of knowledge ownership, access to knowledge, and benefit sharing must also be addressed to achieve fairness in the utilization of TK. Recognize importance of trademarks To effectively safeguard Thailand’s commercial interests, it is highly impor-

tant that the country gives as much importance to trademarks of TK as it does to patents. Rather than adopting passive measures by compromising in international disputes over trademarks of Thai TK, such as creating a new and unknown ‘Thai Hom Mali Rice’ trademark to replace the long well-known ‘Thai Jasmine Rice’ brand when the challenge to an American firm over its ‘Jasmati’ trademark came to no avail, the Thai government must adopt a proactive measure to defend the nation’s trade interests in the fight to retain their widely recognized TK names such as ‘Jasmine rice’ or ‘Rusie Dutton’, since these famous names contain high commercial value for the nation. One of the ways to attain this is to continue to join forces with other developing countries in advocating the inclusion of products other than wine and spirits into the Geographical Indication rules of the TRIPS agreement. Ratification of the Convention on Biological Diversity (CBD) Another legal route to preserve certain types of indigenous knowledge related to biological diversity is to rely on the Convention on Biological Diversity (CBD), which does not cover only issues related to genetic resources. Article 8 (j) of the CBD also addresses the protection and preservation of TK or traditional lifestyles of communities that are relevant to the use of biological diversity. Although the CBD may not cover some abstract types of TK that is irrelevant to the issue of biodiversity, as in the case of Rusie Dutton, it can nevertheless provide an effective legal tool for the protection of other kinds of TK, especially those related to plants and animals. Article 16 (5) of the CBD requires that CBD signatories must ensure that IPRs that may interfere with the implementation of the CBD must support and not run counter to the objectives of the CBD. This can be interpreted that any IPR protection must not infringe on the protection of TK, which is part of the CBD objectives. Furthermore, Article 22 (1) also states that the CBD shall not affect the rights and obligations of any member countries deriving from any existing international agreement, as long as the

Special Feature : Traditional Knowledge vis-a-vis Modern IPR exercise of those rights do not seriously damage or threaten biological diversity. This provision offers some room for manoeuvre for countries wishing to protect their genetic resources if international agreements on trade and intellectual property such as the WTOTRIPS violate the countries’ ability to protect their own biodiversity and TK. There is therefore hope that the CBD can be a device for countries wishing to seek protection of their own genetic resources and indigenous know-how. Thailand signed the CBD in 1992 during the United Nations Conference on Environment and Development (UNCED) held in Brazil. However, it took Thailand 12 years before the country eventually ratified the Convention on 29 January 2004.14 Further, mere ratification of conventions does not necessarily translate into its effective implementation, especially when the CBD leaves generous room for national legislation. Thailand must carefully plan to implement effective measures to make use of the provisions offered by the Convention.

Conclusion Unlike protecting IPRs in industrial goods, safeguarding IPR in TK, genetic resources and biodiversity is a much more delicate issue, since there are no clear-cut rules to govern the management and regulations of the use of these resources. Laws must be enacted to defend national resources and knowledge from monopolization. A Traditional Knowledge Protection Act is currently being drafted, but several issues are pending for further debate.15 In any case, safeguarding these national treasures should not be the responsibility of the government alone. Civil society can become an important ally of the government in protecting communal IP and resources. The ob-

stacle now is how civil society and the state can cross the border that divides them. Success here relies much upon the willingness of both sides to set aside their differences and recognize the important roles that each plays in society, especially in IPR protection.

Footnotes 1. (2002) “Veda, Ayurveda registered as trademarks in Germany”, Deccan Herald, December 29. http:// www.iprlawindia.org/category05/ 3559 2. “Piya Benyasarn v. Director-General of the Department of Intellectual Property in the Capacity of Chairman of the Trademark Boad” Case No. 333/1999, Thailand, Decision date: January 28, 1999. The Center of Excellence-Waseda Institute for Corporation Law and Society, Research Center for the Legal System of Intellectual Property, Japan. http://www.21coe-win-cls.org/rclip/ db/search_form.php 3. (2006) “Thailand fighting Japan’s snapping of Rusie Dutton, citing common names can’t be trademarked”, Prachachart Turakij, July 31. 4. “Prior art or the state of the art usually refers to the complete body of knowledge which is available to the public before a patent application is filed or, if a priority date is claimed, before that priority date.” Source: (2002) Ruiz, Manuel. “The international debate on traditional knowledge as prior art in the patent system: Issues and options for developing countries” October, Center for International Environmental Law. http://www.ciel.org/Publications/ PriorArt_ManuelRuiz_Oct02.pdf 5. Hansen, Stephen A., VanFleet, Justin W. (2003) “Traditional Knowledge and Intellectual Property: A

Handbook on Issues and Options for Traditional Knowledge Holders in Protecting their Intellectual Property and Maintaining Biological Diversity”, American Association for the Advancement of Science (AAAS), July. http://shr.aaas.org/tek/handbook/handbook.pdf 6. (2004) “The role of Registers and Databases in the protection of Traditional Knowledge: A comparative analysis” UNU-IAS Report, United Nations University, January. http:// www.ias.unu.edu/binaries/UNUIAS _TKRegistersReport.pdf 7. ibid., p.7. 8. From a telephone conversation with a DIP official, 16 November 2006. 9. (2004) “The Role of Registers and Databases in the Protection of Traditional Knowledge: A comparative analysis”, p. 16. 10. Ayurveda is a form of alternative medicine used primarily in the Indian subcontinent. 11. (2004) “The role of Registers and Databases in the protection of Traditional Knowledge: A comparative analysis”, p. 17-18. 12. (2003) “President’s ’04 Budget request underscores USPTO’s role in promoting economic growth”, USPTO Press Release, February 4. http://www.uspto.gov/web/offices/ com/speeches/03-05.htm 13. For full reports of the villagers’ documents, see South East Asia River Networks (SEARIN). http://www. searin.org/Th/ThaiBanResearch. htm 14. ‘Thailand Third National Report on the Convention on Biological Diversity’ http://www.biodiv.org/doc/world /th/th-nr-03-en.pdf 15. For a Thai summary of issues being debated in the draft of the Traditional Knowledge Protection Act, see the Department of Intellectual Property. http://www.ipthailand.org ˆ

Note: The views expressed here are those of the author and do not necessarily reflect the views of the ITD. Special Themes of Asia Pacific Tech Monitor, 2007 Articles are invited from eminent authors and experts on the following special themes identified for the forthcoming issues of Asia Pacific Tech Monitor 2007. Issues Jul-Aug Sep-Oct Nov-Dec

SpecialThemes New and emerging biomass energy technologies relevant to Asia-Pacific countries Open innovation: A new paradigm in innovation management Natural disaster management: Preventive and mitigation technologies

Deadlines for receiving articles 15 May 2007 15 Jul 2007 15 Sep 2007

The articles may be sent to: E-mail: [email protected]

TECH MONITOR z Mar-Apr 2007

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