First Reading for Geographical Indications (Wine and Spirits) Registration Amendment Bill
Wednesday 23rd March 2016
The long awaited Geographical Indications (Wine and Spirits) Registration Amendment Bill (the “Bill”) which amends the Geographical Indications (Wines and Spirits) Registration Act (the “Act”) passed its first reading in Parliament on 17 March 2016 and has been referred to the Primary Production Committee for review and submissions.
The Bill addresses issues identified with the Act, which was passed in 2006 but never brought into force. Once implemented, the Act will enable geographical indicators (GIs) for wines and spirits to be registered in New Zealand through a registration regime administered by the Intellectual Property Office of New Zealand (IPONZ) (similar to the current trade mark registration regime). New Zealand is part of a growing trend in protecting GIs through such a registration system.
GI’s indicate the geographical origin of goods that have a given quality, reputation or other feature attributable to their geographical origin. The GI registration regime protects the interests of consumers of wine and spirits by providing assurance that the product using a registered GI originates from the area to which the GI relates.
The ability to register regional names, such as MARLBOROUGH and MARTINBOROUGH, ensures that the qualities and reputations associated with products from these regions are maintained. A GI register will also make it easier for exporters to promote and protect their wines and spirits abroad, which is intended to aid the growth of New Zealand’s wine exports. This is pertinent to New Zealand winemakers as wine exports have grown significantly since the Act was passed, with the total value of exports reaching $1.42 billion for June year end 2015 (New Zealand Winegrowers Annual Report 2015).
Who can use a NZ GI for wine or spirits?
For a wine to be labelled with a New Zealand registered GI, at least 85% of the wine must come from grapes harvested in the region to which the GI relates (the 85% rule). Under the Act, there is no restriction on where the other 15% of wine must originate from. However, the Bill amends this to provide that where a wine is labelled with a New Zealand registered GI, all the wine must be made from grapes harvested in New Zealand. For spirits, the entire spirit must have originated in the geographical origin to which the registered GI relates.
GI users must also adhere to any other restrictions placed on the GI.
The Act goes further than protecting GI’s alone as it also prohibits use of the words “kind”, “type”, “style”, “imitation”, or any similar word or expression in conjunction with the GI.
There is no direct means to enforce a GI registration under the Act. Instead, the Act makes a breach of a restriction on the use of a GI, an automatic breach of section 9 of the Fair Trading Act 1986 (the section prohibiting misleading and deceptive conduct in trade). Complaints under the FTA are investigated by the Commerce Commission, this allows for both rights holders and members of the public to complain directly to the Commerce Commission.
What GI’s can we expect to see?
Certain GI’s will be automatically registered once the register is implemented, these are: NEW ZEALAND, NORTH ISLAND, and SOUTH ISLAND. These GI’s cannot be removed from the register or altered, and do not require renewal. Those presently using these GI’s will need to be aware of the restrictions for use
All other GI’s will need to be applied for by ‘interested’ parties, and renewed every 10 years. NZWine has already indicated that they will pay the New Zealand application fees to register 29 priority New Zealand regional names as GIs.
Foreign GI’s may also be registered under the regime. This means we may see applications for international GI’s such as “Scotch Whisky”, “Champagne” and “Bordeaux”. However, the Ministry of Business, Innovation and Employment (MBIE) anticipates that there will not be a large number of foreign GI applications, and has indicated that they expect to see only ten in the first two years following implementation of the regime. To be eligible for registration as a GI in New Zealand, the foreign GI must also be protected in its country of origin, and not have fallen into disuse in that country.
Process for registration
The process for an application and registration of a GI is likely to operate like the present trade mark system where an interested party makes an application to the Registrar accompanied with an application fee. The Registrar will then examine the application in accordance with the regulations. This should include an opposition period for the public to oppose registration of a GI. However, the draft regulations and proposed fee structure are yet to be released for consultation, so we can expect to see some debate once these are released.
In the meantime, IPONZ has created a new webpage to keep us updated about GI’s and the registration process.
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. If you would like further information, contact one of our trade mark specialists.