Consultation on Options for Re-Purposing of Geographical Indications Legislation

The Australian Government has opened a new consultation on its legislation relating to Geographical Indications (GIs) in light of its on-going Free Trade Agreement negotiations with the EU. Responses are sought by 30th November 2020.

Along with requesting Australia to agree to protect 236 spirit names and 172 agricultural and other names as GIs, the EU has requested Australia to change the way that GIs are protected and the scope of their protection.

Currently Australia does not have a unified GI protection regime. At a general level protection for GIs in relation to goods can be obtained by registering certification trade marks, which are used to show that the goods are certified as being of particular quality, characteristic, origin, material or mode of manufacture. Although protectable in this way, GIs for wine are also specifically provided for in the Wine Australia Act 2013. GI protection for spirits is available within the framework of the Australia New Zealand Food Standards Code.

Protection as a GI under these legislative provisions requires that the used sign identifies the relevant goods as originating in a particular country, region or locality and that those goods have a given quality, reputation or characteristic that is essentially attributable to that geographical origin. It also requires that the certifying entity deposits a set of rules outlining the criteria that needs to be met in order to make use of a GI. Those rules need to be approved both by the Australian Trade Marks Office and the Australian Competition and Consumer Commission.

If the EU geographical indication protection proposals are to be accommodated Australia would need to restructure its GI protection regime by creating a GI Right and this would most likely occur within the framework of the Trade Marks Act 1995.

While no decision has been made on whether to accommodate the EU proposals, the current consultation is focused around how an expanded GI regime could work best for Australian interests. Hence, the questions that the consultation raises are not limited to those arising in the EU proposals. Questions for consideration include:

• Whether only certain types of goods should be registerable as GIs;
• Whether an individual GI can only be registered in relation to one type of good or more than one;
• Whether any safeguards need to be built in, such as excluding common or generic product names;
• Whether and under what circumstances a new GI right can co-exist with a prior trade mark right;
• What level of detail is required for the conditions for use of a GI in respect of such things are production methods, boundaries and minimum local ingredients;
• Whether the current prohibition on using a GI term with a term such as ‘type’ or ‘style’ in relation to wines should also apply in respect of agricultural produce;
• Whether protection should automatically extend to translations of GI terms;
• Whether protection should extend to preventing the use of non-GI words or images that nonetheless evoke a GI, such as ‘glen’ for whiskey;
• Whether there should be any particular restrictions on the type of entity that can be the owner of a GI and what type of relationship they must have with the goods and region;
• Whether a third-party that meets the criteria automatically use a GI, or do they also need to get approval from the GI owner;
• Whether the bringing of an enforcement action can only be done by the GI owner or whether legitimate users of a GI right can too;
• Whether criminal penalties should be available as an enforcement remedy in respect of GIs.

Author: Quinn Miller

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