Registered protection now available in New Zealand for Geographical Indications for wines and spirits

The Geographical Indications (Wine and Spirits) Registration Act 2006 (GI Act) will come into force on 27 July this year. The GI Act creates a Geographical Indications Register (GI Register) and provides a regime for registering place names as geographical indications (GIs) for wines and spirits.

The GI Act will bring in additional protection, and provide more cost-effective enforcement mechanisms for registered GIs. Previously, protection of geographical indications was only available through legal action in respect of trade marks, passing off and the Fair Trading Act 1986.

An application for a New Zealand GI will require extensive supporting information and evidence concerning the boundaries of the territory, region or locality to which the GI relates, any proposed conditions on use of the GI, the quality, reputation or other characteristic of the wine or spirit attributable to that area, and any other information requested by the registrar that will assist in the examination of the application.

An application for a foreign GI will be based on the registration in the country of origin, and generally will not require as significant supporting information.

Background

A GI is an indication that identifies a product as originating in a country, region or locality, where its quality, reputation or other characteristic is attributable to its geographical origin.

The GI Act applies only to wine and spirits.

New Zealand and foreign GIs will be registrable, although foreign GIs must also be protected (and not have fallen into disuse) in their country of origin in order to be registered here. Some New Zealand GIs are to be treated as registered automatically: “New Zealand”, “North Island” and “South Island”.

Registration is for an initial period 5 years, renewable for further periods of 10 years.

GIs are collective rights which can be used by anyone in respect of goods that meet the particular restrictions for the GI (which, besides locality, may include production methods and other characteristics).

Any “interested person” may apply for registration of a GI. This will likely include wine and spirit producers and producer associations.

Restricted and permitted use

Anyone who complies with the restrictions on use of a GI may use it. The GI Act itself contains some basic requirements, for instance that a person may use a New Zealand registered GI in trade in New Zealand in relation to a wine only if:

  • at least 85% of the wine is obtained from grapes harvested in the place or places of geographical origin or origins to which the New Zealand registered GI relates;
  • all of the constituent remainder of the wine (if any) is obtained from grapes harvested in New Zealand; and
  • the New Zealand registered GI is used in accordance with the registration in New Zealand.

The GI Act sets other basic requirements for foreign GIs for wine, and New Zealand and foreign GIs for spirits.

Individual registrations are likely to contain further requirements.

The restrictions apply regardless of whether:

  • the true place of origin of the wine or spirit is indicated;
  • the GI is used in translation; or
  • qualifying words like “kind”, “type”, “style”, “imitation”, etc. are used.

The restrictions do not apply in some circumstances, including where there has been certain prior continuous use of a GI.

A breach of these restrictions is deemed to be a breach of s 9 of the Fair Trading Act 1986, which prohibits engaging, in trade, in conduct that is misleading or deceptive or is likely to mislead or deceive.

Relationship with trade marks

The GI Act addresses conflicts between trade marks and GIs, and includes some scope for co-existence on the respective registers.

Generally speaking, a GI will not be registrable if it is identical or confusingly similar to a trade mark, unless:

  • the trade mark owner consents to registration of the GI; or
  • the Registrar of Geographical Indications considers that the GI may coexist with the trade mark, having regard to:
    • the GI’s history of use in good faith in New Zealand;
    • recognition of the GI in New Zealand as a GI;
    • the legitimate interests of the trade mark owner and of third parties; and
    • any other relevant factors.

Likewise, the Trade Marks Act 2002 will be amended to prohibit registration of a trade mark that contains a GI that is registered or the subject of an earlier application under the GI Act if:

  • the trade mark relates to a wine or spirit that does not originate in the place of geographical origin to which the registered geographical indication relates; and
  • the use of the trade mark is likely to deceive or confuse.

Such a trade mark may be registered if there is honest concurrent use which makes it proper for the trade mark to be registered.

What it means for you

Registration of a GI benefits producers by reinforcing reputation in products, and making enforcement of GIs easier within New Zealand.

New Zealand wine and spirit exporters will gain additional flow-on benefits, where overseas GI regimes will register non-domestic GIs only if they are also registered in their country of origin.

It will be necessary to check that use will not contravene a registered GI.