Registered protection for GIs now one step closer
The New Zealand government has recently introduced the Geographical Indications (Wine and Spirits) Registration Amendment Bill, which will revise the Geographical Indications (Wines and Spirits) Registration Act, breathing life into a project that has been simmering for a very long time. New Zealand is now one step closer to implementing a system which will provide registered protection for geographical indications (GIs).
This article sets out an overview of GIs, how they have been protected by New Zealand law up until now, and the impacts of the proposed regime.
A GI is a sign that specifies a geographical origin of goods that possess certain qualities or reputation due to that origin. Examples of GIs include 'Champagne', 'Cognac' and 'Darjeeling'. GIs are different to trademarks, indications of source and appellations of origin, as the following two criteria must be satisfied:
- The sign must identify a product as originating from a given place; and
- Certain qualities, characteristics or reputation of the product should essentially be due to that place of origin.
By contrast, trademarks can identify non-geographical origins of trade, indications of source need not relate to the qualities or characteristics of goods from that source, and qualities or characteristics of goods protected by appellations of origin must result exclusively from the geographical origin.
GIs can act as product differentiators in a marketplace, and can be a key element in developing collective brands. They can provide competitive advantage, added value to products and brands, and can increase export opportunities. Protecting a GI allows a rights holder to prevent unauthorised use by free-riders and maintain the integrity of their product.
New Zealand is obligated to protect GIs under the Agreement on Trade-Related Aspects of Intellectual Property Rights. It must provide interested parties means to protect GIs against misleading use or unfair competition. It must also provide additional means to prevent unauthorised use of GIs relating to wines and spirits.
Currently, New Zealand law protects GIs through the Fair Trading Act 1986, trademark law and the common law tort of passing off. For example, there are some collective marks on the New Zealand Trademarks Register protecting GIs in New Zealand, including WAIHEKE ISLAND CERTIFIED WINE and PARMIGIANO REGGIANO, and STILTON is registered as a certification mark.
The new bill is set to amend the Geographical Indications (Wine and Spirits) Registration Act, which although passed in 2006, has in actual fact never come into force. The act will create a register for GIs, and interested parties will be able to apply to register the names and boundaries of GIs for wines and spirits. A committee of wine and spirit experts will examine applications and determine which marks should be registered. Examples of GIs likely to be registered include ‘Marlborough’, ‘Otago’ and ‘Hawkes Bay’ in relation to wine. The bill itself also deems the terms ‘New Zealand’, ‘North Island’ and ‘South Island’ to automatically be “enduring New Zealand geographical indications”.
Users of GIs must then abide by the registered conditions. Once registered, a GI for wine will only be usable on products where at least 85% of the wine comes from that region. A GI for spirits may only be used on products originating from the specified region. The act will provide a framework for rights holders to address illicit or improper use of GIs.
Once a holder has a registration for a New Zealand GI, it will also be much easier to gain international protection of that GI. For example, a holder of a New Zealand registered GI will likely be able to obtain registrations in other countries with such a framework.
The wine industry welcomes the proposed change, as it will provide consumers with knowledge that a bottle labelled “Marlborough Sauvignon Blanc” is in fact what it is claiming to be. The system will strengthen and defend the well-established reputations the country has for New Zealand wines, which will assist the industry’s goal to become a top-five export industry hitting over NZ$2 billion in export sales.
Katy Stove, James & Wells
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