What do STILTON and TEQUILA have in common? Apart from forming the basis of a delightful evening, they are geographical indications of origin (GIs).
With global marketplaces comes the need to protect the reputational advantage gained from the uniqueness of goods originating from different regions of the world. In this article, Emma Mitchell and Sara Pearson explain what GIs are, how they’re treated in Australia, and the broader commercial and political implications.
What are GIs?
A GI is a Geographical Indication of origin and is a name that identifies that a product comes from a particular geographic area. In many countries (particularly throughout Europe), GIs are specifically protected, meaning that they can only be used in connection with goods originating from a specific country.
The Australian Government has agreed to allow for the protection for GIs under the international Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’), which defines and mandates protections for GIs. Other than in respect of wine, Australia does not protect GIs per se. The Australian Trade Marks Office (ATMO) may object to a trade mark which contains a geographical reference which connotes the origin of a product on the basis that it is likely to deceive consumers, or that it is not distinctive of the applied-for goods.
Otherwise, GIs can be protected through certification trade marks (CTM). CTMs are used to distinguish goods as originating in a specific geographic area where there is a particular quality, reputation or other characteristic that is attributable to that area. CTMs are usually owned and managed by an industry group or government entity. That owner authorizes other traders to use the CTM on their goods, as long as those goods meet rules which must be approved by the Australian Competition and Consumer Commission.
Challenges in obtaining GI trade marks: The state of play in Australia
Protection for GIs through the Australian trade marks system has become increasingly difficult to obtain. In Australia, the courts have taken a position against GIs where GIs are in common use in Australia or traders from different regions use similar marks.
An example of this is the case of Basmati. In 2019 the Indian Government[1] applied to register BASMATI as a CTM in relation to rice grown in India. The ATMO rejected the application on the basis that BASMATI is a variety of rice also grown in Pakistan. The ATMO considered that Pakistan’s competing claim to BASAMATI was relevant in whether BASMATI could function as a CTM.[2] The Indian Government has appealed this decision to the Federal Court of Australia.
Competing ownership claims have also been a feature of the Republic of Peru’s efforts to obtain a CTM for PISCO in Australia. PISCO is a type of brandy that has been made in Peru and Chile for hundreds of years,[3] and there is dispute over which country is the country of origin of PISCO,[4] and who has the rights to the GI.[5] The ATMO refused the Republic of Peru’s CTM application on the basis that, because Chile and Peru both produce PISCO, consumers would be confused by PISCO being used as a CTM by Peru. The ATMO found that other traders, including Chilean traders, have a legitimate right to use PISCO.[6] Peru has appealed this decision to the Federal Court.
Where the ATMO does not reject an application, a competitor can challenge it. In 2019, Kraft Foods Group Brands LLC’s (Kraft) applied for registration of KRAFT PARMESAN CHEESE (this was a standard trade mark, not a CTM). The Consorzio Del Formaggio Parmigiano Reggiano (Consorzio) (which represents the interests of Parmigiano Reggiano cheese producers in Italy) opposed this application. The Consorzio owns multiple CTMs and a standard trade mark in Australia using the words “PARMIGIANO REGGIANO”. The Consorzio opposed Kraft’s application on the basis that “Parmesan” has the same meaning as “Parmigiano Reggiano” to Australian consumers, and therefore consumers will think that the Kraft cheese is Parmigiano Reggiano or is from or associated with Italy. The ATMO rejected Consorzio’s arguments and decided that (1) “parmesan” is used in Australia to refer to a style or flavor of cheese and does not always refer to “Parmigiano Reggiano” and (2) that consumers would not be confused between “Parmesan” and “Parmigiano Reggiano” or think that Kraft’s cheese is “Parmigiano Reggiano” or originates in Italy.[7] The Consorzio appealed this decision to the Federal Court.
Commercial and political implications
The ATMO attempts to keep out of political considerations related to GIs.[8] In the meantime, the extent of GI protection available to traders is largely a decision to be made by the Australian Government. GIs are a highly political topic, as seen in the recent stalemate between Australia and the European Union in relation to the EU-Australian Free Trade Agreement. The EU demanded that the Trade Agreement include the protection of certain GIs (166 different food stuffs and 234 different spirits[9]), but Australia refused.[10]
The Australian Government has adopted the position of protecting Australian traders using potential GIs, as if the EU GIs were protected, Australian traders‘ right to use those potential GIs would be in jeopardy. For example, if the GI for GORGONZOLA in relation to cheese was protected, traders would infringe on that mark if they also used GORGONZOLA in relation to cheese that was not produced in Italy. As it stands, GORGONZOLA is not a registered trade mark in Australia.[11]
The Free Trade negotiations between Australia and the EU have since broken down.
The New Zealand Government found a way to address this issue in its own negotiations with the EU. Close to 2,000 GIs will now be protected in New Zealand as part of that Free Trade Agreement. However traders with at least 5 years prior use of “Gruyère” or “Parmesan” will be able to continue using those marks, as long as they “clearly indicate the actual geographical origin of the good concerned”.[12] How this solution works remains to be seen. Future producers of goods protected under the EU GIs, that do not meet the EU GI requirements, will be restricted from using them.
Contact us
If you have questions about how GI certification trade marks effect your business, feel free to speak with Emma Mitchell or Sara Pearson.
Please note: Griffith Hack represents the Republic of Peru and Kraft Food Group.
Footnotes
[1] More specifically the Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India.
[2] Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India [2022] ATMO 228 at [55]-[56].
[3] “History of Pisco”, The Pisco People From < www.thepiscopeople.com.au/history-of-pisco> Accessed on 9 August 2023.
[4] Cunningham, John M. and Grannan, Cydney (2016)”) “Spirited Away: 9 Liquors from Around the World”. Encyclopedia Britannica. From: <https://www.britannica.com/list/spirited-away-9-liquors-from-around-the-world>. Accessed on: 9 August 2023.
[5] Niemann, Jorge. (2022) “Pisco: An endless conflict for its geographical indication or an opportunity for international collaboration?” Revista Justicia &Derecho, vol. 4, no. 3, pp. 1-14. From: <https://www.researchgate.net/publication/357442798_Pisco_An_endless_conflict_for_its_
geographical_indication_or_an_opportunity_for_international_collaboration>. Accessed on: 9 August 2023; Mitchell, Jerry T., and William C. Terry. (2011) “Contesting Pisco: Chile, Peru, and The Politics Of Trade.” Geographical Review, vol. 101, no. 4, pp. 518–35. JSTOR, From: http://www.jstor.org/stable/23208637. Accessed on: 9 August 2023.
[6] [2023] ATMO 53 at [17].
[7] Consorzio Del Formaggio Parmigiano Reggiano v Kraft Foods Group Brands LLC
[2022] ATMO 166 at [39], [51].
[8] Republic of Peru (Peruvian State)[2023] ATMO 53 at [13] and [23]; Agricultural and Processed Food Products Export Development Authority, Ministry of Commerce and Industry, Government of India [2022] ATMO 228 at [2]-[5] and [39].
[9] Department of Foreign Affairs and Trade, Australian Government, List of EU’s requested Geographical Indications’. Accessed from <https://www.dfat.gov.au/trade/agreements/negotiations/aeufta/geographical-indications/list-of-eu-requested-geographic-indications-gis>. Accessed on 9 August 2023.
[10] Norman, Jane (11 June 2023) ”Free-trade talks between Australia, EU stall over prosecco, parmesan, mozzarella, feta naming rights”, ABC News. From: <https://www.abc.net.au/news/2023-06-11/free-trade-talks-stall-over-prosecco-parmesan-feta-naming-rights/102451712?utm_campaign=abc_news_web&utm_content=link&utm_medium=content_shared&utm_source=abc_news_web>. Accessed on 9 August 2023; Department of Foreign Affairs and Trade, Australian Government, “Australia-EU FTA – Report on 14th Negotiating Round, 6-10 February 2023”. From: <https://www.dfat.gov.au/trade/agreements/negotiations/aeufta/aeufta-news/australia-eu-fta-report-14th-negotiating-round-6-10-february-2023> Accessed on 9 August 2023.
[11] Although Consorzio Per La Tutela Del Formaggio Gorgonzola continues to try to obtain a GI Certification mark for GORGONZOLA (Australian Trade Mark Application No. 2276545).
[12] Source: https://www.mfat.govt.nz/en/trade/free-trade-agreements/free-trade-agreements-concluded-but-not-in-force/new-zealand-european-union-free-trade-agreement/geographical-indications/
