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What's In A (Place) Name?

20 January 2014

When you’re sipping your Champagne, or perhaps it’s New Zealand bubbly, have you ever wondered why there’s a name difference in what is essentially a sparkling white wine? It’s all about “geographical indication”.

A “geographical indication” or GI, is used to indicate that a product originates from a certain place and has a quality, reputation, or a characteristic associated with that type of product made in that region. The example we’re most familiar with is “Champagne”, being a sparkling wine from the Champagne region in France.

In order to protect your GI “branded” product from competitors (local or foreign) or where you want to name your product using an established GI, there are many legal issues to be thought through. You may, for example, want to protect your “Hamilton” cheese brand, or use the name “Stilton” for your cheese.

Our Fair Trading Act gives you one form of protection from rival traders; it prohibits conduct that’s misleading or deceptive. Specifically the legislation states that products cannot be promoted making false, misleading or deceptive statements regarding the origin (GI) of the product. Your cheese, for example, cannot be labeled “Hamilton” cheese if it’s produced in Taiwan.

If you believe that someone else’s use of a particular GI in relation to a product is misleading or deceiving, a prosecution can be taken by the Commerce Commission, or yourself as a concerned person.

The protection of a GI under this Act results from the consumer protection focus of the Act which requires that consumers shouldn’t be misled or deceived as to the origin of the products they are purchasing.

You can get a more formal level of legal protection for a GI in limited circumstances, by trade mark registration. If a trade mark containing a GI meets the registration requirements, then the trade mark owner will have the legal protections provided by the Trade Marks Act.

The Trade Marks Act allows for registration of specific types of trade mark called “certification trade marks” and “collective trade marks.” These are alternatives to a standard trade mark registration, and generally can include a GI as part of the trade mark.

A certification trade mark can allow the trade mark owner to certify qualifying products as being of a particular GI. It’s not the producer of the products that owns the trade mark but another independent entity, operating under approved regulations, which administers the certification. An example of this is placing a trade mark on a product that states “100% produced in Hamilton”.

A collective trade mark will generally be registered in the name of a collective association. The association then authorises members of that association to use the trade mark to distinguish their products from products produced by non-members. Continuing to use our cheese example, the “Hamilton Cheese Makers’ Association” trade mark would be applied to your cheese if you were a member of that association.

Internationally, GI protections and obligations come about due to New Zealand’s membership of the World Trade Organisation (WTO). As a member, New Zealand is party to the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The TRIPS Agreement requires member countries to have mechanisms in place to prevent the misuse of international GIs. This means that you should be able to obtain protection for your cheese’s “Hamilton” GI in countries that are members of the WTO. It also means that you cannot generally use the “Stilton” GI in New Zealand for your cheese produced in Hamilton.

The key message regarding use of a geographical indication is to think carefully before using either local or international place names in relation to products, as there can be implications both nationally and internationally.

 

Shelley Slade-Gully is an associate at Norris Ward McKinnon. With offices in Hamilton and Huntly, we have friendly, expert legal advisors ready to help you with your business and personal legal matters. Find out more about us here.