In June 2018, New Zealand and the European Union (EU) formally began negotiations for a free trade agreement (FTA). One key aspect of the negotiations is geographical indications (GIs). The EU wants New Zealand to recognize and protect a list of names for wine, spirits and other products currently protected in the EU as GIs. It is proposed that in return, the EU will recognize and protect certain New Zealand product names as GIs in the EU.
The New Zealand Government is seeking submissions in relation to:
- any substantiated objections to the recognition and protection of any of the GIs listed by the EU; and
- nominations for New Zealand names that may be submitted to the EU for consideration as GIs.
As well as considering whether their own GI name could qualify for recognition, New Zealand producers of wines, spirits and foods should consider the EU list of wines, spirits and foods to see whether the recognition of the EU GI’s could impact their future business.
The closing date for substantiated objections and nominations is March 19, 2019.
Remind me, what are GIs?
A GI is a distinctive sign used to identify a product as originating from a place in a particular country, region or locality where its quality, reputation or other characteristic is linked to its geographical region. GIs are collective rights, meaning no single person is entitled to its exclusive use, rather any trader complying with the provisions governing GIs is allowed to use it. Some well-known examples of GIs are Scotch whiskey, Parma ham, Cognac and Champagne. Having GI protection means that the name cannot be used in trade in relation to a specified product unless the product meets the raw material and/or manufacturing requirements concerning a particular geographical region.
New Zealand currently protects GIs relating to wines and spirits under the Geographical Indications (Wines and Spirits) Registration Act 2006 (GI Act), which entered into force in 2017. Products beyond wines and spirits are covered by Trade Marks Act 2002, the Fair Trading Act 1986 and the law of passing off.
So, how would it work? The proposed framework
As part of the FTA, the EU is proposing that New Zealand recognizes and protects specific product names as geographical indications in New Zealand. Specifically, the EU is seeking geographical indications in New Zealand be protected against:
- Any direct or indirect commercial use of a protected name for comparable products which are not compliant with the products specification of the geographical indication;
- Misuse, imitation or evocation (for instance, to prevent a trader using the phrase ‘Parma ham style’ on packaging);
- False or misleading indication as to origin, nature or essential qualities of products; and
- Practice liable to mislead consumers as to the true origin of a product.
The list of product names provided by the EU is extensive. It includes 172 food products, over 1500 wines and around 200 spirits. The product names can be found here GI wines, GI spirits, and GI foodstuffs. The proposed framework extends well beyond New Zealand’s current scope of protection and includes many products not just wines and spirits.
If accepted, recognizing the list would mean New Zealand producers would not be permitted to use the GI terms to describe their own products with similar characteristics made with a similar process.
The framework would also allow for reciprocal treatment of New Zealand GIs in the EU. Having protection in the EU would help New Zealand producers distinguish their products and protect the unique nature of New Zealand goods. With New Zealand products such as Marlborough sauvignon blanc, Central Otago pinot noir and Manuka honey becoming recognized worldwide, the proposed framework could help New Zealand enhance and protect the reputation of its own GIs overseas.
The consultation process
The Government is seeking submissions from anyone who objects to the protection of any of the names in the EU’s lists. An objection could relate to any of the names on the lists (as well as any transliteration, transcription or translation of a name) and could be based on any of the following grounds;
- the EU GI name is identical, or confusingly similar, to a trademark or GI that is currently used in New Zealand, or is the subject of a pending application or registration in New Zealand;
- the EU GI name is homonymous with a GI that is the subject of a pending application or registration under the GI Act, and that has a different geographical origin;
- the EU GI name is used in New Zealand as the name of a plant variety, including a wine grape variety, or an animal breed;
- the EU GI name is used in New Zealand as the common name for the relevant good;
- use or protection of the EU GI name in relation to the relevant good would likely offend a significant section of the community, including Māori.
The Government is also seeking nominations for New Zealand names that may be submitted to the EU for consideration as GIs. The EU will consider names that are officially recognized as GIs in New Zealand (either through registration under the GI Act or the Trade Marks Act) and comply with the definition of a GI.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.