Earlier this year I went to a workshop on the GI aspects of the EU – New Zealand Free Trade Agreement negotiations. New Zealand’s lead negotiator, Martin Harvey, gave an update on the status of those negotiations.
As is widely-known, the EU wants New Zealand to recognise GIs that are protected in the EU, and it would reciprocate in kind. Of course, the number of European GIs far outstrips the number of New Zealand GIs. Also, some of the European GIs on the proposed list, such as Prosecco and Gruyère, are likely to cause problems for New Zealand traders if they were unavailable for general use. Therefore, any concluded agreement is likely to include additional benefits in terms of trade access for New Zealand.
What is a GI?
Broadly speaking, a GI is a sign used to indicate goods which have characteristics that are linked to the goods’ origin from a particular place.
GIs have been used for centuries.[1] They were used in ancient Egypt by brickmakers to indicate the origin-related resistance of bricks and stones with which pyramids were made. In ancient Greece, Thasian wine (from the island of Thasos) yielded a price premium of 20 drachmas for 20 litres. Even some present-day GIs such as Parmigiano and Comté date back to the 13th century.[2]
GIs are usually place names, but other names and signs can also function as GIs if they are linked to a particular place. An example is the word “feta”, which is not a place but is so closely connected to Greece that the ECJ has held that the word may not be used by other EU countries in describing their own products.[3]
How are GIs protected?
GIs are protected through a wide variety of different approaches in different countries, and often by a combination of two or more approaches. These include passing off; consumer protection legislation such as the Fair Trading Act; agricultural quality control regimes; laws governing trade marks, collective marks and certification marks; and registration under specific, sui generis GI laws.[4]
Where specific, sui generis protection is in place, typically this has stemmed not from gradual, principled and incremental advances in that country’s jurisprudence, but rather as a result of international trade negotiations. Countries such as New Zealand, which do not have a long history of providing specific protection for GIs, find themselves required to squeeze specific systems for their protection into an existing framework of intellectual property and consumer protection laws.
TRIPS Agreement
The most important trade agreement the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights, which was concluded as part of the GATT Uruguay Round and adopted at Marrakesh in April 1994 (“TRIPS”).
Article 22(2) of TRIPS requires Members to provide the legal means to prevent use of GIs which constitutes unfair competition, or which misleads the public as to the geographical origin of the goods.
TRIPS provides a higher level of protection for wines and spirits than for other products. GIs have always been of particular importance in relation to the labelling and marketing of wines. Central to this is the notion of terroir. It has been said that “[w]ine, as a sort of liquid geography, has the magical ability to convey a sense of place in the glass.”[5]
Protection for wines and spirits in New Zealand
The Geographical Indications (Wines and Spirits) Registration Act 2006 established a registration system in New Zealand for GIs in relating to wines and spirits.
The primary reason for its enactment was to ensure compliance with the TRIPS Agreement, although stakeholders in the New Zealand wine industry were also aware of the potential marketing benefits which could be realised through the use of GIs.[6]
Other goods
At present, protection for GIs other than wines and spirits is provided primarily by the Fair Trading Act 1986 and the common law tort of passing off. GIs may also be registered as certification marks, collective marks and (in some cases) trade marks. For example, recently the mark MANUKA HONEY was accepted as a New Zealand certification mark.[7]
Future developments
It seems likely that New Zealand will eventually get a formal system of registration and protection for GIs other than wines and spirits. Accordingly, producers should be thinking now about how to best leverage this. There are a number of New Zealand products, such as Canterbury lamb, Bluff oysters, Waiheke Island olive oil, and native plants such as kawakawa and horopito that could perhaps benefit.
Internationally, there are examples of industry in-fighting or complacency that have resulted in rights being eroded. Wagyu beef, for example, (which translates as “Japanese cow/beef”) is now produced in a number of other countries, including Australia and New Zealand, and the term no longer denotes just Japanese-produced wagyu.
The best strategy is likely to involve producers in each industry working together to establish a concerted, unified approach to protection.
[1] “Why do Geographical Indications Matter to us?”, 30 July 2003, <http://ec.europa.eu/trade/issues/sectoral/intell_property/argu_en.htm>.
[2] Ibid.
[3] European Court of Justice, Federal Republic of Germany v Commission of the European Communities and Kingdom of Denmark v Commission of the European Communities Joined Cases C-465/02 and C-466/02, 25 October 2005. (Although one of New Zealand’s leading experts on GIs argues that “feta” is not a true GI, but simply a political accommodation.)
[4] “Geographical Indications: From Darjeeling to Doha” WIPO Magazine July 2007.
[5] Michael Cooper “Loose Labels” Listener (Auckland, New Zealand, 9 – 15 August 2008) 58.
[6] Philip Gregan, CEO New Zealand Winegrowers “Geographical indications: National brands, regional brands, company brands”. Paper presented to the New Zealand Wine Business Symposium “Building Wine Brands”, Eastern Institute of Technology, Taradale, Hawkes Bay 17-18 June 2008.
[7] Manuka Honey Appellation Society Inc [2018] NZIPOTM 7. This mark is now under opposition.
