This article was written by Scott Bouvier and Katie Warner.
Australian businesses in the food, alcohol and agricultural sectors will be impacted by a free trade agreement proposal by the European Union (EU) relating to European Geographical Indications if they don't take action.
As part of the current trade negotiations, the EU has requested that a list of European Geographical Indications (EU GI Names) be protected under Australia's intellectual property regime. If the Australian Government agrees to protect these names then businesses will be prevented from using words like "Feta" or "Irish cream" on their Australian products.
The Government has invited industry stakeholders to object to items in the EU GI Names The objection period closes on 13 November 2019 and all effected businesses need to submit their objections.
What is a Geographical Indication?
A "Geographical Indication" or "GI" is used on goods to identify that they originate from a specific region. To be recognised as a GI, a special quality, reputation or other characteristic of the goods must be attributed to that region. For example, the ingredients, the production systems, or the agricultural methods used in the region.
Australia has two GI registration systems:
- GIs for all goods can be registered under the Trade Marks Act 1995 (Cth); and
- GIs for wine can be registered under the Wine Australia Act 2013 (Cth).
Registered GIs may only be used in relation to goods that are produced in the specified region and according to the rules protecting the GI. Some examples of GIs registered in Australia include "Champagne" for wine, "Scotch Whisky" for spirits, "Stilton" for cheese, and "Darjeeling" for tea. Practically speaking, this means businesses using "Darjeeling" in Australia must grow and produce their tea in certain tea gardens of Darjeeling, India to a designated quality standard specified in the rules protecting the GI.
The proposed EU Geographical Indications
The EU has asked to extend GI protection in Australia to the EU GI Names, which consist of 172 foodstuffs names and 236 spirit names. A full list can be accessed here. The names are relevant to many Australian sectors, including the meat, dairy, confectionary, horticultural, beer and spirits industries. Examples include Feta, Camembert de Normandie, Gruyère, Edam Holland, Scotch Beef, Irish Cream, Cognac and Grappa.
The EU has confirmed that the protection sought does not extend to parts of the names underlined in the EU GI Names. For example, for "Edam Holland", protection would not extend to the word "Edam" used by itself. However, this is qualified by the Department of Foreign Affairs and Trade's (DFAT) statement that "use of underlined names is permitted, as long as they are not used in a way that may deceive or mislead consumers as to the true origin or quality of the product".
Furthermore, amongst other things, the EU has requested that the EU GI Names be protected against any:
- direct or indirect commercial use of an EU GI Name for comparable products, including where the product is used as an ingredient; and
- other false or misleading use of the EU GI Name to indicate the origin, nature or essential qualities of the product, including on the packaging, advertising material, or documents relating to the product.
This means that a business using the word "Edam" by itself on their cheese products may still be liable, if, for example, the packaging of the goods conveys a false impression about the cheese's origin.
Extending protection to the EU GI Names will raise considerable challenges for goods produced in Australia and, at least for an interim period, will place them at a competitive disadvantage. It is arguable that many names that were originally European places have now become "generic" in Australia, in that they indicate a type of product rather than the place of its origin. Australian consumers are unlikely to be misled by use of generic terms and may be confused for some time if other descriptions are developed for these types of products.
The objection process
The Government has not committed to protecting all EU GI Names and is likely to be cognisant of and sympathetic to stakeholder concerns. However, in order to properly gauge those concerns and collect data, DFAT has published the EU GI Names for public objection and stakeholder consultation. DFAT is responsible for managing the objection process and has published information about the practical aspects of the procedure here.
Stakeholders can make objections to specific EU GI Names to DFAT on certain grounds, which include:
- the name is used in Australia as the common name for the relevant good (i.e. it is generic);
- the name is used in Australia as the name of a plant variety or an animal breed;
- the name is identical to, or likely to cause confusion with, a trade mark or GI that is registered or the subject of a pending application in Australia; and / or
- the name is identical to, or likely to cause confusion with, an unregistered trade mark or GI that has acquired rights through use in Australia.
The proposed EU Wine Geographical Indications
Australia also has an existing agreement with the EU that protects GIs for European and Australian Wines. This is known as the "Wine Agreement".
As part of the free trade agreement negotiations, the EU has asked to extend GI protection under the Wine Agreement to the names "Prosecco" and "Vittoria". DFAT have announced that they are not seeking formal public objections to inclusion of these names. However, they have invited stakeholders to email their views to a-eufta@dfat.gov.au.
What next?
Extending GI protection to the EU GI Names will have a significant impact on existing and future branding in the food and beverages sector. Businesses should closely review the EU GI Names to consider the impact on their existing (or future) products and make a reasoned objection before the objection period closes on 13 November 2019.
Our Intellectual Property team has industry expertise across the food, alcohol and agricultural sectors most likely to be affected by this proposal – if your business would like to discuss a potential objection to the EU GI Names, please contact our team.
