The importance and commercial value of “geographical indications” has been highlighted in recent disputes before the Australian Trade Marks Office relating to ownership of cheese names (Asiago, Gorgonzola, and Roquefort).
Trade mark protection in Australia is available to marks which are used to distinguish goods or services provided in the course of trade. A small subset of registered trade marks are known as “certification marks”. Certification protects marks which are used to distinguish goods or services in the course of trade that are certified in relation to quality, accuracy or some other characteristic including origin, material or mode of manufacture.
Certification marks include geographical indications (GIs) which identify goods as originating in a specific region where a particular quality, reputation or other characteristic of the goods is attributable to that geographic origin. Attributes may derive from:
- the method of production
- ingredients used
- environmental or agricultural features of the region
- a strong reputation that may have developed in the region for producing particular goods of a certain quality over time.
Examples of GIs
Examples of GIs currently registered in Australia as certification marks are:
- Darjeeling for tea made from Camellia sinsensis grown and produced in Darjeeling in West Indies, India
- Harris Tweed for cloth which is hand woven by islanders at their homes in the Outer Hebrides of Scotland, finished in the Outer Hebrides and made from pure virgin wool dyed and spun in the Outer Hebrides
- Scotch Whisky for whisky made from malt or grain in Scotland
Ownership of GIs
The owner of a GI will usually be a group of producers that may form an unincorporated association or a central organisation or a local or state authority. The owner of the GI has exclusive rights to use the GI and may authorise others to use it if they meet the relevant criteria. Use of the GI will be subject to rules which set out the applicable qualities or characteristics of the goods sold by reference to the GI.
Negotiations with EU regarding proposed protection of EU GIs
In June 2018 the Australian Government commenced negotiations for a comprehensive and ambitious Free Trade Agreement with the European Union (EU) with a view to delivering new trade and investment opportunities across Australia. The EU has identified the protection of GIs as one of its key objectives in the negotiations and has requested that Australia protect 236 names of spirits Spirits list and 172 names of food products Foodstuffs list.
The names of spirits include “Calvados” (France), “Irish Cream” (Ireland) and “Grappa” (Italy).
The names of food products include “Scotch Lamb” (UK), “Gouda Holland” (Netherlands) and “Asiago” (Italy).
It is noteworthy that in many cases the EU is not seeking to protect names such as Camembert, Brie, Edam and Pecorino, but rather compound names such as:
- Brie de Normandie
- Edam Holland
- Camembert de Normandie
- Pecorino Romano
This will mean that Australian producers currently using Camembert etc on their cheese products would not be adversely impacted.
Impact of Brexit on UK GIs
Since the list of GIs submitted by the EU, Brexit has occurred and so GIs relating to food products/spirits originating in the UK will not be included in the EU list. Instead these GIs will be the subject of separate discussions under the separate free trade agreement being negotiated between the UK and Australia. The UK Department for International Trade published a policy paper in 2019 in preparation for the negotiations, which included the protection of UK GIs as an objective. Negotiations commenced virtually in June last year and we are now in the fourth round of bilateral trade noting a result in not expected until later this year.
The UK is already a party to one trade-related EU-Australia agreement recognising GIs – the EU-Australia Wine Agreement – which has been transitioned into UK-Australian agreements to ensure continuity. On 18 January 2019, Australia and the UK signed two bilateral agreements which took effect on 1 January 2021 to allow arrangements in place between Australia and the EU for wine to continue to apply post-Brexit in the UK. The wine agreements facilitate and promote trade in wine and recognise GIs in both countries. It is expected that the UK-Australia Free Trade Agreement under discussion will significantly expand the remit of GI protections.
Consultation process in Australia
A consultation process was conducted by IP Australia with stakeholders (industry, business, community, legal) with regard to this process in October and November 2020.
The addition of the EU GIs would significantly increase the number of registered GIs in this country and greatly enhance protection of EU GIs here. To protect specific EU GI terms by reference to new GI rights would necessitate Australia amending our current legislation (the Trade Marks Act 1995 (Cth)).
IP Australia has indicated that safeguards would be adopted to ensure that prior marks would be respected and common names for products could still be used. The intention is that the new right would protect both Australian and International GIs. This is however a hotly contested issue where local producers use words that would be annexed by the GIs to describe and sell their products.
The consultation period has now closed, and IP Australia will publish a response this year. If a decision is made by the government to progress reform of GIs, there will be an opportunity for the public to provide feedback with regard to the draft legislation at a later date.
We will watch out for any legislative developments in relation to this topic. In particular, we will gauge and report on the impact of any changes on the use and registration by Australian producers of existing names which contain EU GIs and UK GIs.