Leveraging off Location – The New GI Regime

Posted on June 27, 2016 in Commercial , Intellectual Property (Tags: Branding, Champagne, Commercial Law, Geographical Indications, Intellectual Property, Pinot Noir, Trade Marks) Intellectual-Property.jpg

Champagne, Parma Ham, Mozzarella, Central Otago Pinot Noir – what do they have in common? They are all geographical indications, a particular type of trade mark which recognises a particular quality or reputation which is attributable to its geographic origin.

New Zealand passed legislation in 2006 to implement a registration scheme for geographical indications, but it has never become operative. In 2015, an amendment bill was introduced to Parliament making some minor changes to that act and with a view to making it law in 2016.

There is currently no registration regime for foreign geographical indications (GIs) nor for New Zealand GIs. This has limited the ability of New Zealand exporters to protect New Zealand GIs in other countries as often it is a requirement that reciprocal rights exist in the country from which the goods are exported.

What exactly are GIs?

A GI is a sign used in conjunction with a product which identifies the product as originating from a particular region or location giving the product a special quality or a reputation attributable to its location. An obvious example is Central Otago Pinot Noir. Currently GIs are protected in New Zealand through the Fair Trading Act 1986, the Common Law Tort of Passing Off and also the Trade Marks Act 2002. In practice, this is largely ineffective due to the costs and practicalities of enforcing legal rights under that regime.

GIs can be distinguished from regular trade marks because they do not act as a sign pointing to the proprietor, but rather a sign of region of origin and of particular characteristics.

What is proposed?

The new legislation will establish a register for GIs. This will require parties who have an interest in utilising the GI regime to make an application for registration. The legislation only requires that the party be “an interested party” so there is the potential for more than one group to seek registration for one particular GI.

The current proposed legislation only relates to foreign and New Zealand wines and spirits. For a New Zealand wine to be labelled with a New Zealand GI (for example, Marlborough Sauvignon Blanc) 100% of the wine must come from grapes harvested in New Zealand but up to 15% of the wine can come from grapes harvested in a New Zealand region other than that indicated by the GI. A GI will be valid for 10 years and is renewable upon payment of renewal fees at the expiry of that period. The exception to this is a new category of “enduring GIs” which includes the North Island, the South Island and New Zealand which will not expire.

Benefits of the implementation of the GI scheme

On a practical level, the register will provide genuine interested parties with an effective legal means for protecting the integrity of their wines and spirits in an affordable manner. A person who uses a GI in relation to goods which did not originate in the geographical region indicated or where they do not meet the conditions of the particular GI, is deemed to have breached the Fair Trading Act.

It is hoped by exporters that having an effective New Zealand GI registration system will enhance the Government’s efforts to launch fair trade agreement negotiations with the EU. One of the difficulties in the past has been the extended protection that should be afforded to GIs for food products. There is still some distance to go given that the current regime will only apply to wines and spirits but it is a step in the right direction. This will of course potentially limit the ability of New Zealand producers to market their markets utilising GIs which are effective in other countries, particularly varieties of cheese.

Given that priority under the new regime will be based on the first to register, groups who believe they may have a GI capable of registration should already be formulating applications in anticipation of the legislation finally coming into force.

Sally Peart