AUSFTA Implementation Bill will allow opposition to GIs

The Australian-US Free Trade Agreement (AUSFTA) Implementing Bill, which has been approved by the Australian House of Representatives but has yet to be ratified by the Senate, will bring changes to the protection of geographical indications (GIs) for wines and spirits in Australia.

Wine and spirit GIs are protected in Australia under the Wine and Brandy Corporation (WBC) Act, which was amended in 1994 to give effect to the Wine Agreement between Australia and the European Union. The WBC Act provides for the creation of a Register of Protected Names, which records the names of Australian GIs and the GIs of each of the members of the European Union that have been notified to Australia under the Wine Agreement. The WBC Act confers absolute protection on registered GIs. This means that the use of the GI is, without exception, prohibited in respect of any wine or spirit not originating from the place denoted by the GI. This is so even where there are prior existing rights such as trademark rights. The principle of 'first in time, first in right' does not apply to GIs registered in Australia in respect of wine.

However, the AUSFTA Implementing Bill provides for the amendment of the WBC Act. Under the amendments, a party wishing to register a GI must submit it to a GI Committee prior to registration. Parties that either own a registered trademark or have applied for registration of a mark that is identical to the proposed GI, or parties who claim common law rights in such a trademark may oppose the registration of the GI. In such cases, the committee will refer the matter to the registrar of trademarks to consider whether the basis of the opposition is valid. If it is, the committee will not register the GI unless, in special circumstances, the registrar of trademarks recommends it.

These provisions will only affect the registration of Australian GIs. EU GIs will continue to be registered in Australia regardless of possible prior rights.

The AUSFTA was signed in May and has already been passed by the US Congress. For more information about the AUSFTA, see AUSFTA will have an impact on IP issues.

Desmond J Ryan, Davies Collison Cave Solicitors, Melbourne