EU GIs Soon Entering the Picture – Say Cheese … or else!
Currently New Zealand’s Geographical Indications (Wine and Spirits) Registration Act 2006 is limited to wine and spirits and meets the minimum requirements under the TRIPs Agreement 1994 in relation thereto. The Act excludes common names for wine and spirits from protection as geographical indications (GIs).
Is “Free Trade” restrictive trade?
A Bill is currently before Parliament that will make the legislative changes necessary to implement the recently negotiated free trade agreement with the European Union. The Bill will make extensive changes to the Act, although most of those changes relate to creating a separate protection regime for the approximately 2,000 EU GIs specified in Chapter A of Annex B of the NZ-EU FTA Intellectual Property chapter.
The Bill will shorten the title of the Act to the Geographical Indications Registration Act 2006 in recognition of the definition of ‘geographical indication’ being expanded to include goods other than wine or spirits. However, product classes other than wine and spirits will only be recognised for the EU GIs specified in or subsequently added to Annex B. Annex A specifies 26 product classes, mainly covering foods and beverages or constituent ingredients thereof, but also covers essential oils, flowers and ornamental plants The Chapter A Annex B GIs will not be subject to registration or renewal fees, but the subsequently added GI terms will be subject to opposition proceedings.
Some of the EU GIs listed in Annex B have transitional periods during which existing users of the term (who are not the EU verified manufacturer of the goods) can continue to use the term, provided that such use does not mislead consumers about the origin of the goods. The transitional period for these terms starts from the date of entry into force of the agreement and have durations that vary as indicated below:
GI Term Goods Maximum Transitional Period
Bayerisches Bier Beer 5-years
Münchener Bier Beer 5-years
Feta Cheeses 9-years
Sherry / Jerez / Xérès Wines 5-years
Gorgonzola Cheeses 5-years
Grappa Spirits 5-years
Prosecco Wines 5-years
Madeira / Madère / Madera Wines 5-years
Porto / Port / Oporto Wines 9-years
The inclusion of the GI terms Gruyère and Parmigiano Reggiano, both for cheeses, does not prevent the continued use of Gruyère or Parmesan respectively by prior users who had used those terms in good faith for a period of at least 5-years prior to the date of entry into force of the agreement. While these two terms are not subject to a specific maximum transitional period, the respective lists of qualifying prior users have been established, although it is not clear whether those prior user rights can be assigned.
It is not all one-way traffic though, with the Netherlands GI ‘Zeeland’ for wine being subject to a condition that it must be used in close conjunction with a clear indication that the wine originates in the Netherlands and gives no exclusive rights in the use of the term ‘New Zealand’!
Currently registered GIs that refer to New Zealand locations are specified in section B of Annex B. Apart from the permanent GIs of ‘New Zealand’, ‘North Island’ and ‘South Island’, the remaining ‘local’ GIs cover wines, but not spirits. The only other GIs for spirits that are currently registered in New Zealand are Cognac (France), Pisco (Peru) and Scotch Whisky (UK).
Enforcement
Currently rights under the Act are enforced by way of proceedings under section 9 of the Fair Trading Act 1986 for misleading or deceptive conduct. The Bill will supplement that with a range of enforcement mechanisms available to any GI registered in New Zealand. Civil remedies, including injunctive relief and delivery up will be available through the High Court. Administrative enforcement will be provided for, principally by the appointment of GI Officers who will have information gathering, entry and inspection, search warrant and other similar powers, and will have the power to issue directions against persons who are contravening the restrictions on use. Border protection measures will also be available, with registered GIs being able to be recorded with Customs in a similar way to how registered trade marks currently are.
New IPONZ Practice Note on GIs in Trade Mark Specifications
With the NZ-EU FTA soon to enter into force IPONZ has refined its practice on how trade mark examiners will treat applications whose specifications contain GIs. In April 2023 IPONZ notified that its general practice is that a GI should not be used as the name of a good in a specification for a class relevant to the GI, as specifications should only include generic descriptions of the goods or services.
However, a GI term can be included alongside a generic term if the goods originate from the place that the GI designates, provided all other criteria for use of that GI are met. The suggested format for such use of GI terms is “[GI name]” (GI) [products covered by the GI], with “Champagne” (GI) wines being an example. Alternative formats that have been accepted include:
- [products covered by the GI] with the protected appellation of origin [GI];
- [products covered by the GI] with the geographical indication [GI];
- [products covered by the GI] protected by an appellation of origin;
- [products covered by the GI] protected by a geographical indication.
IPONZ has recently further refined its practice note with suggestions for generic wording to use where an applicant may have otherwise wanted to use an EU GI term in their specification. Examples include:
- white, brined cheese made from goat’s (or sheep’s) milk instead of Feta
- nutty, pale yellow, firm cheese made from cow's milk instead of Gruyere
- liqueur made from whiskey and cream instead of Irish Cream
Notable Observations
It is noteworthy that IPONZ allows New Zealand based businesses to register trade marks where the class 32 or 33 specification includes phrases in the format ‘[products covered by the GI] with the protected appellation of origin [GI]’, with the GI being a foreign geographical indication. The assumption being that the New Zealand business is importing unbranded product from a foreign business that has the right to use the relevant GI. Also noteworthy is that there are starting to be examples of foreign businesses registering (class 33) trade marks in New Zealand that contain registered New Zealand geographical indications in the mark and have an appropriate recognition of that in the specification. Examples of this being:
- 1173957 for WELCOME TO NEW ZEALAND in the name of an American corporation with the class 33 specification: Wine; alcoholic beverages (except beer); all the aforesaid goods originating within the geographical indication NEW ZEALAND, registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
- 1234652 for MUMM CENTRAL OTAGO Device in the name of a French business with the class 33 specification: Wines originating within the geographical indication Central Otago registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
- 1236950 for MUMM MARLBOROUGH Device in the name of a French business with the class 33 specification: Wines originating within the geographical indication MARLBOROUGH registered under the Geographical Indications (Wine and Spirits) Registration Act 2006.
Indications of Imminent Change
The Bill has recently been reported back from the select committee stage and will soon have its second reading. The unanimous select committee recommendations only involved some minor clarificational changes. The report noted that some submitters considered the administrative enforcement system to be unnecessary bureaucracy with existing mechanisms being sufficient, but the select committee considered the administrative enforcement system is necessary to satisfy the terms of the FTA.
Once the NZ-EU FTA enters into force and the Act is amended it can be expected that the Act will be amended again soon thereafter in order to give effect to the NZ-UK FTA. As previously noted the NZ-UK FTA included conditional provisions allowing UK GIs to be similarly protected if the Act is amended in bespoke fashion so as to recognise some foreign GIs.
Authors: Quinn Miller and Jim Piper
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