March 6, 2019

European geographical indications – friend or foe for New Zealand?

Free trade agreement negotiations between New Zealand and Europe have put New Zealand in an interesting position with calls for it to recognise and protect a list of EU geographical indications (GIs) in New Zealand.

Business owners in New Zealand have already been locked out of exporting products to the European Union which may bear a European GI such as feta and gruyère. The question is, whether as part of the current negotiations New Zealand can leverage its own GI protection in a way which will outweigh any missed opportunities in European markets.

GIs are words associated with certain characteristics, reputations or qualities of goods that are directly attributable to a geographic origin. The connection between a product and a geographic origin may be due to natural factors, like terroir or human factors like the traditional means of production. Examples of GIs for wines and spirits include Champagne and Bordeaux, both of which indicate wines from particular geographical regions of France.

Fundamentally, GIs are collective rights and not owned by anyone – as opposed to other intellectual property rights which typically have one or several owners. Any person who complies with the provisions governing the use of a GI is entitled to use it. In New Zealand we already have protection for local and international wines and spirits to be recognised by GIs under the Geographical Indications (Wine and Spirit) Registration Act 2006. Interested parties can apply to register the name and boundaries of a GI and any restrictions on its use. For example, any wine that bears the registered GI “Marlborough” must be made up of at least 85% of wine obtained from grapes harvested in Marlborough in accordance with the defined territory. GIs for other products are protected via the Trade Marks Act 2002 and our consumer protection laws.

With GIs, there is always a delicate tension between the interests of the consumer and the interests of the producer. The standard is constantly up for debate as to what has become a common name or a generic term freely usable by consumers to describe products, and what branding and distinctive characteristics are of intrinsic value to producers which should be protected by a GI. For example, when the EU registered “Edam Holland” and “Gouda Holland” as GIs, it was made clear that the protection applied to the full compound term, and that producers outside of the protected region could continue to use the common names “edam” and “gouda”.

This approach allowed the Netherlands to successfully register these two important geographical indications while preserving the rights of producers worldwide to continue using the generic names in good faith, thereby avoiding negative trade impacts. We can be reasonably confident that any restrictions for the treatment of European GIs in New Zealand are likely to be on the compound terms only – and not their individual components. However, for GIs like “feta” there is still a wide ambit and reasonable debate that the term has become generic in the face of the New Zealand consuming public. The European Commission has acknowledged that terms such as “mozzarella,” “brie”, “gouda”, “edam” and “cheddar” are indeed generic.

There is also the issue of when a GI protection could undermine or infringe prior established trade mark rights in New Zealand. When Canada entered into similar negotiations with the European Union, solutions were adopted (under the Comprehensive Economic Trade Agreement) to create a compromise for a number of names that were found to be in conflict. If we mimic these, some solutions could be to include (a) permitted coexistence with existing New Zealand trade marks; (b) allowing European GIs that have been used for a specified time period to continue to be used in New Zealand, with those outside of that time period being phased out; and (c) permitting the use of a qualified term such as “style”, “imitation”, “type”, or “kind” in conjunction with GIs to create greater opportunity for new entrants to the market (e.g. “feta-style”).

Or maybe it’s time for New Zealand to step up and make the most of their own GIs and branding on food products and stop piggy-backing on the European styles? After all, the New Zealand wine industry has done this very successfully.

Submissions are now open until 19th March 2019 on the European Union’s proposed list of product names it wants protected as GIs in New Zealand for exclusive use by European producers. Nominations are also open for New Zealand product names that may be put forward to the EU for consideration as GIs.

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