A Geographical Indication (GI) is a sign used to identify the particular geographical location that a product originates from, and denotes a quality, reputation or other notable characteristic of the product that is linked to that origin. Typically, it is the place name where the product originates, such as Scotch for Scottish Whisky or Champagne for sparkling wine coming from the French region Champagne.
The new Geographical Indications Registration system is already proving valuable for winegrowers in both the domestic and international markets, by reinforcing the distinctiveness and quality of their products, as well as making it easier to challenge unauthorised users. So a year in, how is this new regime functioning?
What is the process for registering a Geographical Indication?
The Geographical Indications Register protects both New Zealand GIs and foreign GIs. For example, Scotch Whisky and Cognac have already been registered in New Zealand, while Napa Valley and Prosecco are still under examination. There are 21 registered or applied for New Zealand GIs on the Register at the moment, however a number of these have additional local GIs within it (for example, the Auckland GI has three local GIs that are wholly or partly in this area – Matakana, Kumeu, and Waiheke Island).
Both the applications and registrations must include information on the GI applied for, geographical co-ordinates that define the boundaries of the territory/region/locality, whether it is for a wine or spirit, and a description of any conditions for use of the GI.
Applicants have also had to file an explanation of the given quality or reputation, or other characteristic, of the wine or spirit that is attributable to its geographical origin, along with evidence supporting this. The Registrar is also able to request further information to help them in their examination.
Once the Registrar has considered the GI application they may accept the application, or issue a notice of non-compliance. If the Registrar considers the application is non-compliant, the applicant will have the opportunity to respond to the notice or amend the application to make it compliant, within a set time frame.
If the GI application is accepted by the Registrar, it is then publicly advertised in the IPONZ monthly journal. If there are no objections lodged within 3 months after advertisement, the GI application is then registered. Registrations initially last 5 years and can then be renewed for further 10 year periods.
How can a GI application be challenged?
An application can be challenged by any interested party within a three month period following its advertisement. To do this, the opponent must file a notice of opposition, which must include the legal grounds upon which the opposition is based, but does not detail the factual circumstances, evidence or arguments under each ground (which are submitted at a later stage in the opposition proceedings).
The length of an opposition proceeding is likely to vary depending on how much evidence is needed, how difficult it is to collect, how the other side runs its case, and whether much time is spent in attempts at settlement. However, a contested opposition proceeding could likely run for 12-24 months.
What is the effect of a GI registration?
GIs provide collective rights which means that any person who produces wine from grapes grown in that particular area, and meets the requirements to use that GI, is able to use it.
Further, a person may only use a New Zealand registered GI on wine if at least 85% of the wine is obtained from grapes harvested in the place of geographical origin to which the GI relates. Restrictions on use of a GI apply if it is used on a product originating from outside of the relevant GI, whether or not the true place or origin of the wine or spirit is indicated; if the registered GI is used in translation, or if it is accompanied by the words ‘kind’, ‘style’ or ‘imitation’.
Importantly, once a GI is protected in New Zealand, you can also apply to register it in other countries, which provides more beneficial enforcement options internationally.
What concurrent legal rights are available?
Producers using place names for wines or spirits in New Zealand are protected by the Fair Trading Act 1986, the common law tort of passing off, or by trade mark law. These legal avenues are still available, although there are some restrictions on the registration of names as both trade marks and GIs. Producers also need to be careful that if a place name does have a GI registered, that they are complying with the provisions governing its use.
A person who makes unauthorised use of a GI will be guilty of engaging in misleading or deceptive conduct under the Fair Trading Act.
In summary, registering a GI provides a faster, more certain, and more cost effective option for wine growers in the event of any unauthorised use of the GI in New Zealand or overseas.
Our thanks to Lauren Butchers for the preparation of this newsflash. The original version of this article was first published in NZ Winegrower Magazine August/September 2017.