Discussion Paper on Possible EU-NZ FTA Changes to Geographical Indications Legislation
Within the context of on-going Free Trade Agreement discussions between New Zealand and the European Union the Ministry of Foreign Affairs and Trade (MFAT) has released a discussion paper on potential changes to New Zealand’s geographical indication (GI) legislation, with feedback sought by Friday, 27 March 2020...
As part of the negotiation, the EU has proposed that:
a. New Zealand protect approximately 2,200 existing EU GIs for exclusive use by qualifying EU producers;
b. the EU will protect qualifying existing New Zealand GIs nominated by New Zealand; and
c. the parties agree a mechanism for adding new names to those lists of GIs in the future.
Currently New Zealand’s GI Act is limited to wines and spirits and meets the minimum requirements under the TRIPs Agreement in relation thereto. In order to give protection to existing EU GIs New Zealand’s GI Act would need to be extended to include foodstuffs. While there is currently some protection in New Zealand for foodstuff GIs under the Trade Marks Act 2002, the Fair Trading Act 1986 and the tort of passing off, this does not necessarily meet the minimum requirements under the TRIPs Agreement for protecting foodstuff GIs if that option of is taken. The TRIPs Agreement gives wine and spirit GIs a higher level of protection than foodstuffs by providing protection against their use even when:
- the true origin of the good is indicated; or
- the GI is used in translation; or
- that use is accompanied by expressions such as “kind”, “type”, “style”, “imitation” or the like.
If New Zealand’s GI Act is changed to include foodstuffs, feedback is sought on whether New Zealand should give foodstuff GIs the same level of protection as applies to wine and spirits. If so, should New Zealand follow the EU by extending that protection to: (i) transcribed or transliterated versions of a GI; (ii) use of the GI accompanied by the terms “method”, “as produced in”, “flavour” and “like” and (iii) use of the GI to identify an ingredient. Further feedback is sought on whether GIs should be protected from use on unrelated products.
The EU seeks to have plant variety and animal breed names only excluded from GI protection if the use of such names as a GI would be likely to mislead or deceive consumers, with their use as GIs is not otherwise necessarily ruled out. Currently the common names for wines and spirits are excluded from protection as GIs.
Currently where the same geographical name designates different areas (homonymous GIs ) they can each be registered as GIs subject to conditions imposed by the Registrar. The EU seeks to prohibit the registration of homonymous GIs if their use would be likely to mislead or deceive.
New Zealand’s GI register is run on a cost recovery basis, which due to the low number of GIs involves high fees. However, the EU seeks to have no fees payable in respect of GIs that get protection under the EU-NZ FTA.
Currently, a registered GI can prevent registration of a trade mark and vice versa. The EU seeks to extend GI rights by allowing a GI application to prevent registration of a later filed trade mark application. They have also proposed that a prior trade mark registration can only prevent registration of a GI if the prior trade marks reputation and renown and length of time it has been used means the proposed GI name is liable to mislead consumers as to the true identity of the relevant product.
The EU proposes that New Zealand’s GI legislation should require each GI to have a product specification, set by an appropriate body, which users need to comply with in order to legitimately use the GI. Currently New Zealand’s criteria are written into the legislation, but if it expands to include foodstuffs then this approach may be too unwieldly. The EU has also proposed that New Zealand legislation provide for control provisions applying to production.
In regards to enforcement the EU has proposed that in addition to the current judicial avenues open to interested parties for enforcing their rights that New Zealand should provide administrative enforcement by way of a public authority that can take enforcement action at the request of any interested party. It is also proposed that the current border protection measures be extended to include GIs.
The EU seeks to only allow GIs protected under the EU-NZ FTA to be cancelled if authorised by the EU or if the GI is no longer protected in the EU, meaning that such GIs will not be able to be challenged on the basis of becoming generic.
In noting Treaty of Waitangi considerations, the discussion paper notes from the WAI 262 report that GIs (at best) only provide an indirect mechanism to protect any kaitiaki relationship associated with those place names and products and that such kaitiaki relationship is what deserves protection, rather than the GI in isolation. Feedback is sought on whether the proposals affect recognition being given to kaitiaki relationships.