Information Sheet: Protection for Geographical Indications in New Zealand
[ Last Updated 27 March 2008 ]
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What Are Geographical Indications?
A geographical indication is used to identify goods that have a specific geographical origin and possess a quality, reputation or other characteristic that is due to that place of origin.
International Law on Geographical Indications
As a Member of the World Trade Organisation [link to WTO website] (WTO), New Zealand is a party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (the TRIPS Agreement [link to WTO website]).
Article 22.1 of TRIPS defines "geographical indications" as "indications that identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality or reputation or other characteristic of the good is essentially attributable to its geographical origin". It means, in effect, that other producers may use terms protected as geographical indications, provided that the use of the geographical indication does not mislead the consumer or constitute an act of unfair competition.
Article 23.1 of TRIPS provides a higher level of protection for geographical indications for wines and spirits. This obliges Members to "provide the legal means for interested parties to prevent use of a geographical indication identifying wines for wines not originating in the place indicated by the geographical indication in question or identifying spirits for spirits no originating in the place indicated by the geographical indication in question, even where the true origin of the goods is indicated or the geographical indication is used in translation or accompanied by expressions such as "kind", "type", "style", imitation" or the like". It means, in effect, that producers from different regions or countries cannot use a wine or spirit geographical indication, even in conjunction with a word such as "like" or "style".
Geographical indications are generally collectively owned intellectual property rights and are generally associated with, but are not limited to, primary or traditional products, for example wine, cheese, meat products, etc.
Further information on international geographical indication-related issues can be found on the website of the Ministry of Foreign Affairs and Trade.
New Zealand Law on Geographical Indications
In New Zealand, protection for geographical indications is currently provided by the Fair Trading Act 1986 and the common law tort of "passing off".
Fair Trading Act 1986
Section 9 of the Fair Trading Act 1986 provides that "no person shall, in trade, engage in conduct that is misleading or deceptive or is likely to mislead or deceive". If a geographical indication is used in trade to create a misleading impression as to the quality, reputation or other characteristic of a product that is due to its place of origin, this could be a breach of the Fair Trading Act 1986.
"Passing Off"
The action of "passing off" is the basis of protection against dishonest business practices and can be used in cases where the goods or services of one person are represented as being those of another person. What is common to "passing off" cases is that the plaintiff loses customers because the defendant led them to believe that they were buying the plaintiff's goods when in fact they were buying goods from the defendant.
In New Zealand, French wine interests used the action of "passing off" to prevent non-French winemakers from labeling their sparkling wine with the term "Champagne".1
The three elements that must be established to succeed in a "passing off" action are:2
- There must be a goodwill or reputation attached to the goods or services which is conveyed to the consumer by means of he identification of the good;
- There must be a demonstrable misrepresentation to the public (whether intentional or not);
- The applicant must demonstrate that they have suffered damage by reason of the erroneous belief engendered by the misrepresentation.
Geographical Indications (Wine and Spirits) Registration Act 2006
The Geographical Indications (Wine and Spirits) Registration Act 2006, which is intended to replace the Geographical Indications Act 1994, is not yet in force. New Zealand complies with our obligations under the TRIPS Agreement [link to WTO website], however, through the mechanisms of the Fair Trading Act 1986 and the common law tort of "passing off". These mechanisms have been demonstrated to provide effective remedies for those parties who feel that their intellectual property rights have been infringed by the actions of other traders.
The Geographical Indications Act 1994 is repealed as from 14 April 2008.
Relationship between the Fair Trading Act and the Geographical Indications Act
Section 30 of the Geographical Indications (Wine and Spirits) Registration Act 2006 provides that a contravention of the provisions of the Act will constitute a breach of section 9 of the Fair Trading Act. This is similar to the provision in section 4(1) of the 1994 Act.
Therefore, the underlying presumption of the Bill is that it promotes the dissemination of accurate labelling information to consumers by automatically triggering the mechanisms in New Zealand's consumer protection legislation, the Fair Trading Act 1986.
As evidenced by the Champagne case, however, it is not necessary to register a geographical indication in order to benefit from the protection afforded by the Fair Trading Act 1986 and the common law tort of "passing off"; and the registration system outlined in the Bill is voluntary.
How Long Does a Protected Geographical Indication Last?
There is no set term of protection for geographical indications. Generally, a geographical indication is protected indefinitely, although Article 24 of the TRIPS Agreement [link to WTO website] provides that WTO [link to WTO website] Members are not required to afford protection to foreign geographical indications where the term has become "customary in common language as the common name for such goods and services". Article 24 also provides that WTO Members are not required to afford protection to foreign geographical indications "which are not or cease to be protected in their country of origin or have fallen into disuse in that country".
Under the Geographical Indications Act 1994 and the Geographical Indications (Wine and Spirits) Registration Bill, registration of a geographical indication entitles the owner to use the geographical indication for an indefinite period.
Protection for Geographical Indications Overseas
The TRIPS Agreement [link to WTO website] does not prescribe how countries are required to protect geographical indications. Some countries, like New Zealand, protect geographical indications primarily through consumer protection legislation. Others use their trade mark laws and others have established separate systems of protection that relate specifically to geographical indications.
International Developments
Negotiations on a multilateral register for wine and spirit geographical indications are currently underway in the WTO [link to WTO website]. Discussions are also taking place on the issue of whether the higher level of protection afforded to wines and spirits under Article 23 of the TRIPS Agreement should be extended to other products.
Further information on international geographical indication-related issues can be found on the website of the Ministry of Foreign Affairs and Trade and the website of the World Trade Organisation.
Further Information
Latest Developments
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Useful Websites
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Legal Advice
The Ministry of Economic Development is not able to provide legal advice. If you have concerns about your legal position, please contact a legal professional familiar with the law relating to intellectual property. You can search for an intellectual property lawyer in the following places:
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