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National & International GIs: The Use of Trade Marks and Geographical Indications in Australia

Overview

A Geographical Indication (GI) can be a powerful marketing tool for a group of producers from a region to identify their goods as having the unique characteristics of that region.

GIs can be registered in Australia for both domestic and foreign regions.

GIs are available for all goods but are most commonly used for food and wine.  From a consumer perspective, GIs assist consumers to associate brands with the known characteristics of a region, such as champagne from the Champagne region in France.

As discussed below, Australia has two systems for protecting GIs:

  • Certification Trade Marks (CTMs); and
  • Wine GIs via a separate system. 

Producers selling goods in Australia need to be aware of these systems.

What is a Geographical Indication (GI)?   

A Geographical Indication (GI) is a name or sign used on goods that have a specific geographical origin and possess qualities, reputation or characteristics that are essentially attributable to that place of origin. Most commonly, a GI includes the name of the place of origin of the goods.

Whether a sign is recognised as a geographical indication is a matter of national law. GIs may be used for a wide variety of products, whether natural, agricultural or manufactured.[1]

GIs in Australia

GIs are used in Australia to indicate a good as originating from a particular region, whether an Australian or overseas region. 

Whilst GIs are available in Australia for all goods, domestically they are most commonly used with respect to beverages, wines in particular, and food produce such as cheese.

Australia is well renowned for its various wine regions and, as such, Australia has a dual-system for the recognition of GIs consisting of Certification Trade Marks (CTM GIs for goods other than wines) and Wine GIs.

CTM GIs

GIs for goods (other than wine) may be registered as ‘Certification Trade Marks’ under the Trade Marks Act 1995 (Cth) (‘Trade Marks Act’).

GIs may also be incorporated into Certification Trade Marks (“CTMs”) which relate to origin of goods, which are registrable under the Trade Marks Act. CTMs indicate that goods meet standards of quality, composition or geographical origin. The standards that the CTMs represent are laid out in rules for each CTM which are publicly available.

Both IP Australia and the Australian Competition and Consumer Commission (“ACCC”) take part in the certification process, ensuring that standards attached to CTMs align with trade marks law, and do not mislead the consumer or raise competition issues.

Once trade marks are registered as CTMs in Australia, they can only be used on goods that have been produced in accordance with the rules governing their use. CTMs enjoy protection which is broadly similar to trade mark protection. Registration of CTMs is dealt with it in the same manner as the registration of standard trade marks.

Owners of registered certification trade marks have a registration which may assist them registering their GIs in other countries and enjoy a stronger position when it comes to preventing unauthorised use of their registered GI.

Examples of GIs registered as CTMs for food in Australia include Parma for meats and Stilton for cheese.

Wine GIs

Producers of wine originating from a protected region will benefit from using a GI which appears on the Australian Register of Protected Geographical Indications and other Terms (‘GI Register’)[2] because of its association with the reputation and characteristics of the grapes which are grown in that particular protected region.

The Geographical Indication Committee[3] (GI Committee) is responsible for the designation of protected wine GIs on the GI Register, which was established under the Wine Australia Corporation Act 1980 (Cth) (‘Wine Act’).

Examples of Wine GIs

Examples of Wine GIs registered in Australia under the different Parts of the GI Register are as follows:

Part 1 - Australian and Foreign GIs

  • Australian: Barossa Valley; Adelaide Hills; Rutherglen; Coonawarra.
  • Foreign: Port; Moselle; Champagne. 

Part 2 – Traditional Expressions for wines originating in a foreign country

  • Sparkling Wine; Cabernet; Muscat; Gran Reserva. 

Part 3 – Quality wine terms for wines originating in Australia

  • Cream; Crusted/Crusting; Ruby; Solera; Tawny; Vintage. 

Part 4 – Additional terms

  • Icewine; Methose Champenoise; Moscato. 

Conditions of Wine GIs

The GI Register also specifies conditions of use attached to each Wine GI protected on the GI Register.

For example, the condition attached to the use of the Traditional Expression ‘Sparkling Wine’ is that it may only be used in respect of wine that, by complete or partial fermentation of contained sugars, has become surcharged with carbon dioxide.

Issues with Trade Marks and GIs in Australia

The trade marks system and the Wine GI system operate parallel to each other. However, the GI system contains important parameters for use of GIs in trade marks.

New GIs are capable of being determined and entered on the GI Register even if a trade mark is registered in respect of all or part of the GI.

However, the Wine Act and Regulations allow for the co-existence of Australian GIs and trade marks registered or applied for prior to the registration of the GI. It is unclear to what extent existing trade mark owners would lose exclusivity of their trade mark protection if a GI is successively registered in respect of all or part of their trade mark.

Owners of registered and unregistered trade marks in Australia can however object on numerous grounds to the determination of a proposed GI.

Notices of proposed GI determinations need to be published by the Geographical Indications Committee to allow objections to be made by persons who will be aggrieved by such determination. Objections can be made on similar grounds to objections to trade mark applications (e.g., that the proposed GI is likely to cause confusion). An appeal process is set out in the Wine Act. Appeals are brought in the Federal Court of Australia.

Top GI – TM tip

If your trade mark is within the food and wine industry check on the GI Register to see if it includes a protected GI before applying for trade mark registration in Australia.

By Fabiola Dos Santos & Saioa Echevarria Idianez

18 September 2013

[1] http://www.wipo.int/geo_indications/en/about.html as at 9 August 2013

[2] http://www.wineaustralia.com/en/Production%20and%20Exporting/Register%20of%20Protected%20GIs%20and%20Other%20Terms.aspx

[3] For more information about the Geographical Indication Committee,  please visit http://www.wineaustralia.com/en/Production%20and%20Exporting/GI Register%20of%20Protected%20GIs%20and%20Other%20Terms/Geographical%20Indications.aspx as at 9 August 2013