Encouraging origins - GIs may finally become registrable

New Zealand may finally be enacting legislation for geographic indications (GIs) for wine and spirits. On March 31 2015 ministers Tim Groser and Paul Goldsmith announced that by the end of 2015, Parliament will amend the Geographical Indications (Wine and Spirits) Registration Act 2006, with an eye toward bringing the act into effect in 2016.

As one can tell from the year of the act, it has been some time since this issue was in the spotlight – so what are GIs? And what effect are they likely to have on the wine and spirits industries?

GIs originate from the European concept of 'terroir' – the characteristics that the geography, geology and climate of a certain place express in agricultural products, particularly grapes used in wine production.

GIs are basically what they sound like – they identify a good as coming from a particular location, which is the source of some attribute of the good, such as its quality or reputation. The classic example is Champagne – a protected term, only to be used for sparkling wines produced in the Champagne region of France.

There is no active legislation relating to GIs in New Zealand at present. While the act passed through Parliament nine years ago, it still requires an order in council from the governor general to come into force. This has yet to occur despite the act being passed so long ago. A similar fate befell its predecessor, the Geographical Indications Act 1994, which was never enacted before its repeal in the more recent act.

Protection for GIs in New Zealand currently resides in the Fair Trading Act 1986, the tort of 'passing off' and the Trademarks Act 2002. Essentially, this protects GI from being used in a way that is misleading or deceptive to consumers, by representing that the particular good originates from a region it does not – and therefore that it has the characteristic(s) of that region.

One tactic used in countries which do not provide legislative protection for GIs has been to register a geographic certification mark. This is a certification trademark which requires that goods of a certain type be produced in a certain area in order to use that mark. Examples include trademarks held by the state of Idaho for potatoes, and the state of Florida for oranges.

Geographical certification marks registered in New Zealand include PARMIGIANO REGGIANO (Registration No 255928), owned by the Consorzio del Formaggio Parmigiano Reggiano, for cheese, and CHIANTI CLASSICO (Registration No 806219), owned by the Consorzio Vino Chianti Classico, for wine. In terms of home-grown trademarks, WAIHEKE ISLAND CERTIFIED WINE (Registration No 767795) is owned by The Waiheke Winegrowers Association Inc.

There are also geographic collective marks, which are administered by regional industry organisations and usable by members of those organisations. In New Zealand, the Consorzio del Prosciutto di San Daniele holds a collective trademark for PROSCIUTTO DI SAN DANIELE SD (Registration No 735330) in Class 29, covering “ham manufactured in and originating from San Daniele, Italy” and the Waiheke Winegrowers Association holds a collective image trademark for WAIHEKE ISLAND OF WINE (Registration No 658428).

These trademarks illustrate that producers perceive an inherent value in the geographic origin of particular goods, and will take steps to protect that value even when there is no explicit mechanism to do so. This of course stems from the value discerning consumers place on the characteristics associated with those regions.

The aim of the GI act is to provide such an explicit mechanism, creating a system for GIs that operates like the current trademark system in New Zealand. A register (and registrar) of GIs will be created, under which 'interested parties', such as a regional growers association, can apply to register the name and boundaries of a GI, as well as whether it relates to wine, spirits or both and any conditions relating to use of the GI. Foreign GIs will be able to be registered, but do not have the same boundary specification requirement.

Once a New Zealand GI has been registered for wine, it will be usable by any person only if at least 85% of the wine is produced from grapes harvested in the relevant region and they obey any conditions on the GI. For New Zealand GIs covering spirits, and for foreign GIs covering wine or spirits, the requirement is simply that the product originates in the relevant region and that the GI is used in accordance with the conditions of its registration, in New Zealand or the country of origin.

From the examples above, under the act CHIANTI might be registered as a foreign GI for wines from the Chianti region of Italy, while WAIHEKE ISLAND might be registered as a GI for wines produced from grapes grown within the defined boundaries of Waiheke Island.

The act sets out a statutory definition for GIs:

“[…] an indication that identifies a wine or spirit as originating in the territory of a country, or a region or locality in that territory, where a given quality, or reputation, or other characteristic, of the wine or spirit is essentially attributable to its geographical origin.”

The act will also provide limitations and exceptions to the protection provided in the act. This will include special provisions for odd cases like homonymous GIs (GIs from different areas with the same name) – as, for example, there is more than one area called Marlborough in the world.

Of course, as amendments are to be passed, the legal framework may change somewhat, but the act is unlikely to differ significantly on passage. The amendments are intended to update the act and ensure the registration process runs smoothly.

One final effect of passing the act will be to bring New Zealand in line with its obligations under the World Trade Organisation's Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). Article 22 of TRIPS provided the definition (above), recreated almost verbatim in the act, and requires that members provide legal means to prevent misleading use of GIs. Article 23 requires additional protection for wines and spirits, preventing the use of GIs even when accompanied by terms such as 'kind', 'style' or the like, and mentions protection for homonymous indications.

The special status of wine and spirits as compared to goods generally under TRIPS explains the focus of the act. Clearly the government considers that the current level of protection is sufficient for other goods at present – or at least that they are not so strongly obligated to provide legislative protection more generally.

Despite that, the producers of at least some other goods, such as cheeses, fruits and vegetables, have demonstrated their interest both in New Zealand and internationally in having relevant GIs protected, by any means available to them. Perhaps now that ball is finally rolling, the country may be in line for more expansive protections in time – but given the rate of progress that has been seen so far, we would advise against holding your breath.

Sue Irwin Ironside and Joseph Bracewell, Baldwins, Auckland