Release of new gTLDs uncorks a wave of criticism
Article written by: Sophie Thoreau | Thursday 30th October 2014
The recent release of a number of new generic top level domain (gTLDs) names by the Internet Corporation for Assigned Names and Numbers (ICANN) including .vin and .wine has been met with strong opposition from wine industry producers, associations and various member states around the world.
The major concern with the release of .vin and .wine gTLDs, which are available on first in first served basis, is the potential for unrelated parties to deliberately misrepresent their association with particular wine regions, for example, bordeaux.wine, and for consumers to be misled into believing there is a connection with the region. Wine producers consider the new gTLDs fail to protect “geographical indications” (GIs) and may ultimately weaken their significance and erode the reputation of these well-known regions. While protection exists for GIs in the marketplace, it would appear such measures are not mirrored online.
The European Commission defines GIs as “distinctive signs used to identify a product as originating in the territory of a particular country, region or locality where its quality, reputation or other characteristic is linked to its geographical origin”. Well-known examples include “Champagne” which can only be used by producers of sparkling wine from the Champagne region and “Bordeaux” for wines from the Bordeaux region.
Unlike other forms of intellectual property, GIs are not owned by a single person or entity, they are owned and used collectively by producers of the goods from within the particular region, provided they meet the requirements entitling use of the GI.
According to the TRIPS agreements, WTO members including New Zealand must provide measures for the protection of GIs against use by parties who mislead consumers as to the true origin of the goods. While the EU operates a register of GIs, New Zealand’s current protection for GIs is provided by the Fair Trading Act 1986, the common law tort of “passing off” and the Trade Marks Act 2002 through protection as a collective or certification trade mark. A certification trade mark registration for NAPA VALLEY provides protection for use of this mark by members of the Napa Valley Vintners Association in New Zealand.
Once in force the Geographical Indications (Wines and Spirits) Registration Act 2006 will introduce a system for registration of geographical indicators relating to wines and spirits in New Zealand. The Martinborough region has taken a proactive approach to protecting this wine-growing region by pre-preparing their appellation ready for registration. This sets out the boundaries of the region and a minimum percentage of Martinborough grapes required to qualify for use of “Martinborough” on wines. The intention of local winemakers is to preserve the reputation and level of quality unique to wines from this region.
We recommend securing key .wine and .vin domain names to protect your brands and GIs online. Certification and collective trade marks remain a mechanism for protection of GIs.
If you would like further information about securing a .wine or .vin gTLDs to protect and strengthen your online presence, or advice for protection of a collective or certification trade mark, contact a Baldwins representative today.
 European Commission, “Geographical-indications”http://ec.europa.eu/trade/policy/accessing-markets/intellectual-property/geographical-indications/
This article is intended to summarise potentially complicated legal issues, and is not intended to be a substitute for individual legal advice. Please contact a Baldwins attorney or other IP professional before acting on any information contained in this publication.