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NZ and EU free trade negotiations: geographical indications on the menu

February 28, 2019

Contacts

Partners Richard Watts
Special Advisors Sarah Chapman
Senior Associates Raymond Scott

Geographical Indications Act Intellectual property

Scotch Whisky, Scotch Beef, Prosecco, Kalamata, Feta, Gorgonzola and Gruyère are some of the names on the menu that the European Union wants to be recognised as geographical indications (GIs) in New Zealand.

These names, were presented by the European Union along with names of other wines, spirits and foodstuffs as part of the free trade agreement negotiations with New Zealand.

Current protection for GIs in New Zealand

A geographical indication is a sign that indicates that a product comes from a particular geographical location and possesses particular qualities or characteristics as a result. For example "Champagne" indicates sparkling wine from the Champagne region and "Roquefort" is a sheep's milk blue cheese from the South of France.

GIs can be registered in New Zealand under the Geographical Indications (Wine and Spirits) Registration Act 2006 (the GI Act). As reported in our earlier article, the GI Act was brought into force in 2017. Although other countries include protection for a variety of products, for example, tea, cheese or ceramics, New Zealand's legislative protection is limited to wines and spirits. So, as the law currently stands, Roquefort could not be registered as a GI here.

The process for registering a GI under the GI Act is similar to the trade mark application process where an application is examined, advertised once accepted, and then subject to an opposition period. A GI registration is effective for a period of five years and may be renewed, meaning that like trade marks, GIs could remain in force in perpetuity.

The Australia New Zealand Food Standards Code (Food Code) also places restrictions on the use of GIs in relation to spirits. Under the Food Code, a GI can only be used if the spirit in question was produced and actually bottled in the country, locality or region indicated.

Protection sought by the European Union

The names presented by the European Union for consideration for GI protection in New Zealand cover wine, spirits, and other food products currently protected as GIs in the European Union. The scope of protection that the European Union is seeking would require New Zealand to enhance its regulatory framework so that it applied to foodstuffs as well as wine and spirits.

The European Union wishes to protect against use of the names in New Zealand for products that do not originate from within the European Union and that do not comply with the relevant European Union product specification. A product specification sets out the name and description of the product, as well as the geographical area relating to its production.

The European Union also wants to restrict other uses, such as use of the protected names together with expressions such as “style”, “type”, “flavour”, “like”, or similar, and representations that are likely to mislead consumers as to the origin or qualities of a product.

If the European Union ’s proposal is accepted, this would mean, for example, that a New Zealand-made cheese could not be marketed in New Zealand as “Feta”, “Feta style”, “like Feta”, or “Feta flavour”.

Consultation with the New Zealand public

New Zealand’s Ministry of Foreign Affairs and Trade (MFAT) is seeking public submissions on the names presented by the European Union. There are various grounds that the public can rely on to raise an objection to a name. These include:

  • if the name is used in New Zealand as the common name for the relevant good;
  • if the name is identical or similar to an existing New Zealand trade mark registration or application;
  • if the name is the same or confusingly similar to a trade mark or GI currently in use in New Zealand; or
  • if protection of the name is likely to offend a significant section of the community, including Māori.

There is also a parallel opportunity for New Zealand to negotiate for recognition of New Zealand names as GIs in the European Union. MFAT is therefore also seeking nominations for New Zealand names to be submitted to the European Union for reciprocal consideration as GIs in Europe. In order to qualify for consideration these names must be registered either under New Zealand’s GI Act or the Trade Marks Act 2002.

The public consultation period ends on 19 March 2019. Further details about how to make submissions are available on MFAT’s website.

For advice on implications of the European Union’s proposal and on making submissions to MFAT, please get in touch with our team.

 

Contributors georgia.fishwick@simpsongrierson.com