Geographical Indications - possible amendments to the Trade Marks Act

For over two years now, the Australian Government has been in negotiations with the European Union (EU) to enter into a Free Trade Agreement (FTA), which would make it easier for Australian products to be sold in the EU.

Given that the EU is one of the largest markets in the world, cementing a FTA would be of great benefit to Australia. As part of any FTA, the EU is seeking protection of its Geographical Indications (GIs) in Australia, being 236 spirit names and 172 agricultural and other names, including “Fine Bordeaux”, “Grappa”, “Camembert de Normandie”, “Finocchiona”, “Gorgonzola”, “Prosciutto di Parma” and “Edam Holland”. If Australia were to accord protection of these EU GIs, it would require amendments to the Trade Marks Act 1995 (Cth) to create specific rights for GIs.

Geographical indications

A GI is the name of a product which also acts as an indication of its origin. The purpose of any GI is to protect a particular quality, reputation or other characteristic of products from a geographical region, so consumers can be assured that a product contains particular qualities. One of the most well-known GIs is “Champagne”, which can only be used in relation to sparkling wine that originates from the Champagne region in France and has been produced in line with the rules associated with the Champagne GI. Further GIs registered in Australia, include “Darjeeling” for tea and “Parmigiano Reggiano” for cheese.

Current protection of GIs in Australia

Currently, there are two ways of protecting GIs in Australia, as follows.

1. Registering the GI as a certification trade mark in relation to the specific goods under the Trade Marks Act 1995 (Cth).
2. For wine, protection is also available under a system administered by Wine Australia under the Wine Australia Act 2013 (Cth).

If registering a GI as a certification trade mark, a set of rules must also be filed with the Trade Marks Office outlining the geographical origin of the goods and any additional standards, which must be met in order to use the GI. These rules need to be approved by the Australian Trade Marks Office, as well as the Australian Competition and Consumer Commission, before a GI can be registered as a certification trade mark.

Possible new rights in Australia for GIs

As part of negotiations for the FTA, the EU has requested further protections for GIs in Australia, which is likely to require Australia to create a new system for protecting them. Many countries have recently made these changes to their laws, in order to conclude a free trade agreement with the EU. Importantly, if Australia agrees to protect the current list of GIs for which the EU is seeking protection (that is, the 236 spirit names and 172 agricultural and other names), these would automatically become registered as GIs, as they have previously been open to opposition to registration in Australia.

Any newly created GI rights could be included within the Trade Mark Act 1995 (Cth) and be administered by the Trade Marks Office, in a similar manner to a standard trade mark. This would allow for one central location for the registration of all GIs in Australia. However, there are a number of factors for Australia to consider before it agrees to implement such a system.

1. Registration

A set of criteria will need to be established in order for a GI to achieve registration. Factors to consider in establishing such criteria include:

• the nature and degree of the connection of the applicant to the relevant geographical region, and whether the applicant should be required to establish such a connection
• whether GI protection of a broader range of goods, than the agricultural products, foodstuffs, beers and spirits that the EU is seeking GI protection for, should be allowed
• whether a new GI and an earlier registered mark should be able to co-exist
  
• the details that will be required to be provided to the Trade Marks Office for the registration of a GI.

2. Standard of Protection

A limit to the scope of protection for any GI would need to be established. The EU is requesting Australia to agree to a standard beyond that required under international agreements, including preventing the use of the GI in conjunction with the words “type” or “style”, as well as prevention of:

• ‘indirect commercial use’
• ‘exploitation of the reputation of a GI’
• ‘misuse, imitation or use evoking’ a GI, including translations, transcriptions or transliterations
  
• use that is ‘liable to convey a false impression as to the origin of a good’.

3. Use

Rules, similar to those required for certification trade marks, would need to be established, outlining the requirements for use of any GI. The EU is only requesting that use of any GI be made by any producer from the geographical region, who complies with the production rules associated with the GI, or anyone marketing those goods. However, if establishing a new GI system in Australia, consideration must be given to whether use of the GI will require approval from the owner of that GI, as required under certification trade marks.

4. Enforcement

Provisions would also be required to enable the enforcement of any registered GI, to prevent or stop any use in breach of the rules associated with that particular GI. Generally, it is the responsibility of the owner of any intellectual property to enforce those rights. However, unlike standard trade marks, users of a GI may have no connection with the owner, but may nevertheless want to take action for the infringement of a GI, without having to involve the owner. Provisions relating to persons able to enforce GI rights will need to be included in any amendments to the Trade Marks Act 1995 (Cth).

Criminal penalty provisions for breach of a registered GI could also be introduced and could operate in much the same way as the anti-counterfeiting provisions under the Trade Marks Act 1995 (Cth).

Consultation period

As negotiations continue with the EU, the Australian Government has opened up a consultation period until 30 November 2020, seeking the public’s views on any changes that may be required to the method of protection for GIs. Importantly, for those in the food and wine industries, there are likely to be limitations on the scope of any registered GIs. If you wish to provide feedback, written submissions can be emailed to consultation@ipaustralia.gov.au. Alternatively, you can provide your comments via IP Australia’s website. IP Australia will also be holding webinars and virtual roundtables leading up to the end of the consultation period, details of which are available on IP Australia’s website.

If you require further advice or assistance on how this may affect your business or trade mark rights, please get in touch with one of our trade mark experts.