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Food terms on the chopping block – extended protection for EU Geographical Indications
Under the Geographical Indications (Wines and Spirits) Registration Act 2006 (“the Act”), it is possible to register in New Zealand a Geographical Indication (GI) for wine and spirits. Following an amendment to that legislation, the nationals of some countries now have protection for GIs for a broader range of goods.
Protection for wine and spirits for all but more for others
On 30 June 2022, New Zealand and the European Union concluded negotiations on a free trade agreement (NZ-EU FTA or the Agreement). Our summary of the IP aspects of the Agreement are set out in this earlier article. One of the key aspects of the Agreement was the extension of New Zealand’s regime for the registration of geographical indications for wine and spirits to include geographical indications for agricultural products, foodstuffs and other types of beverages.
The European Union Free Trade Agreement Legislation Amendment Act 2024 (the amending legislation), which received Royal assent on 25 March 2024, implements provisions in the Agreement, and makes significant changes to the Act. The new regime took effect as of 1 May 2024.
The Act has been renamed the Geographical Indications Registration Act 2006. The Act creates a new class of GIs - EU FTA geographical indications. Such a GI is defined in section 6 of the Act as a geographical indication that—
- identifies a wine, spirit, or other good as originating in a country that is a member state of the EU; and
- is listed in Section A of Annex 18-B of the EU FTA.
To save you counting the GIs listed in the Annex, I can tell you that New Zealand has “registered” and is now protecting 1,975 Geographical Indications (“GIs”) from the European Union. These GIs are used on a wide range of products, mostly wine and spirits, but also foods such as cheeses, meats, oils, fruit, vegetables and confectionery. The EU GIs have been added to the Register of GIs without any fee being paid. Previously, the only way a GI could be protected, for a wine or spirit, was on application and payment of a fee of NZD 5,000. Prior to the completion of the Agreement there were only 3 EU GIs registered in New Zealand – Champagne, Prosecco and Cognac.
In contrast, the EU has agreed to protect 23 New Zealand wine and spirits GIs, covering the main wine regions. There is no provision for the protection of New Zealand GIs for other goods.
It is to be noted that only entities from a member state of the European Union are entitled to protection for GIs for any product other than wines and spirits. During the very swift legislative process, New Zealand Intellectual Property Attorneys, Inc., made submissions to the effect that such a provision favouring only certain nationals was contrary to Articles 3 and 4 of the World Trade Organization Agreement of Trade-Related Aspects of Intellectual Property Rights (TRIPS).
Article 3 of TRIPS provides that each Member shall accord to the nationals of other Members treatment no less favourable than that it accords to its own nationals with regard to the protection of intellectual property.
More relevantly, Article 4 goes states that any “advantage, favour, privilege or immunity granted by a Member to the nationals of any other country shall be accorded immediately and unconditionally to the nationals of all other Members”. The expanded rights granted to EU member states by protecting GIs for goods other than wine and spirits have not been accorded to nationals of all other Members of TRIPS.
Unfortunately, the submission fell on deaf ears as the Select Committee did not recommend any amendments to the Act to open up the option to protect the broader class of GIs to other nations, even though the IP chapter of the NZ-EU FTA requires each party to comply with its commitments under the TRIPS Agreement.
Prohibition on use of EU FTA geographical indication terms
From 1 May 2024, no person or business can continue to use, or start using, any of the EU FTA geographical indication terms on their product unless:
- they are importing a product that comes from the specific location in Europe that is related to the GI, and
- the product complies with the requirements of the GI.
The Act provides for a gradual phase-out of the use of some terms for a handful of cheeses and alcohol products in New Zealand, which may continue to be used if in use before entry into force of the Agreement, subject to certain conditions. The phase out period is nine (9) years for Feta and Port, and five (5) years for Sherry, Madeira, Grappa, Prosecco, Bayerisches Bier, Münchener Bier and Gorgonzola.
There is a carve out for Gruyère and Parmesan. New Zealand businesses that have used these terms for five (5) years prior to entry into force of the Agreement can continue using those terms indefinitely.
New enforcement measures
The amendments to the Act also include new enforcement measures for GIs, including those from the European Union.
The Act confers broad powers on GI Officers appointed by the chief executive of the Ministry of Business, Innovation, and Employment. The enforcement powers included may require the provision of information, the power of entry and inspection without a search warrant, and the issue of notices of direction to require that use of the GI ceases and allegedly breaching goods are withdrawn from trade.
Who is paying for this?
Buried deep in the amending legislation, in schedule 2, is a list of consequential amendments to other legislation. Included in that list is amendments to the Trade Marks Act 2002. Specifically, the Trade Marks Act has been amended to allow the use of fees paid to IPONZ for the registration of trade marks to be used “to recover the costs, or a share of the costs, of the Registrar of Geographical Indications in the performance of the Registrar’s functions, powers, and duties under the Geographical Indications Registration Act 2006”.
We made submissions against this provision as it was unfair to trade mark owners from New Zealand and other countries to be paying for the maintenance of the Register protecting rights of only EU member states. Again, these submissions were not picked up by the Select Committee as no amendment was made to the Act.
Where to from here?
Both the EU and NZ can add up to 30 new GIs to the list of protected GIs every three years. This perhaps leaves open the possibilities for the protection of a broader range of NZ GIs.
The Act provides for an opposition period, which will be run contemporaneously with the examination process, for any new GI or any changes to existing GIs.
When New Zealand concluded its FTA agreement with the UK, (NZ-UK FTA) the parties agreed to enter into consultation regarding the protection of GIs if NZ adopts any substantive change to NZ’s GIs regime. A substantive change is stated to include the introduction of a sui generis scheme for the registration and protection of GIs for agricultural products or foodstuffs.
In light of the changes to the Act to comply with the NZ-EU FTA and provide for the protection of GIs for foodstuffs, it is possible that the UK will seek for UK GIs to be protected in NZ. Notable UK GIs include whiskey and cheese GIs. There are no formal negotiations underway at this time.
Many other countries have GIs for various products so we can expect that as NZ concludes further FTAs with other countries that extension of the NZ GI regime is likely.
More information about the European Union GIs, can be obtained from the geographical indications section of the IPONZ website.
Elena Szentiványi - May 2024
