More than a trade mark: how Geographical Indications could boost Australian business

Australia has a long history of protecting brands and distinctive names – but what about Geographical Indications (GIs)? A cheese board, consisting of Gorgonzola, Parmigiano Reggiano, Roquefort and some Kalamata olives, accompanied by Champagne, for example, has more laws surrounding it than many would expect.

Twenty or so years ago, most people would probably have never heard of GIs. Now, however, a lot of people know that all Champagne is sparkling wine, but not all sparkling wine is Champagne. This is because Champagne is a GI – so sparkling wine can only be called Champagne if it comes from the Champagne region in northern France.

GIs are controversial in Australia. They were part of negotiations for the European Union-Australia Free Trade Agreement, which ultimately failed in late 2023. However, with New Zealand successfully negotiating a Free Trade Agreement with Europe, which came into effect in May this year, a GI regime is not off the table in Australia – and there would be many advantages for Australian businesses.

A brief history of brand protection in Australia

In Australia, brands have long been protected under the Trade Marks Act, the Australian Consumer Law, and the common law tort of ‘passing off’. For example, registering a trade mark provides the owner the exclusive right to use that mark in relation to the goods or services for which it is registered. Misleading and deceptive conduct under the Australian Consumer Law[1] and passing off can be used to prevent misrepresentations in the course of trade to the public and can be used to protect the reputation of a business. The overlap between GIs and brand protection in Australia dates back to 1994, when Australia and the European Union (EU) (previously, the European Commission) signed an agreement to regulate the trade in wine between Australia and the EU.[2] However, it was the international Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) signed in Marrakesh in 1994, to which the most countries are parties, that first mandated international protection for GIs. The term GI was devised to encompass other expressions, such as ‘appellations of origin’, already in use in other international treaties and national legislations.[3] The new term was given a specific definition in Article 22.1 of the TRIPS Agreement, as “indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.”

What is a GI and how are they protected in Australia?

A GI is a name identifying that a product originates from a particular place and possesses qualities or a reputation due to that origin. In other words, the GI system protects the names of products that derive from specific regions and have specific qualities that are linked to that production territory, such as Champagne. GIs are specifically protected in most countries throughout Europe. Therefore, the relevant name can only be used in connection with goods originating from that specific geographic area. Products that have been granted GI recognition are listed in geographical indications registers. GIs can be protected in Australia through a registered GI, but that is only available for wines through the Wine Australia Act 2013. It is possible to register a certification trade mark, which may function as a GI, as is the case for Parmigiano Reggiano for example. Certification trade marks indicate goods or services that meet certain standards, for example of quality, composition or geographical origin, but over the years, this has become increasingly harder to do in Australia. Other mechanisms under Australian Consumer Law, such as misleading conduct or passing off as set out above, may also be used as indirect mechanisms to protect GI terms. However, it seems that over time, IP Australia has taken a position that makes it increasingly harder to protect GIs in Australia as certification marks.

Why are GIs controversial in Australia?

In June 2018, the Australian Government commenced negotiations for the European Union-Australia Free Trade Agreement (EU-AU FTA), which was hoped would result in a comprehensive and wide-ranging agreement protecting GIs in Australia. The EU had identified the protection of GIs as one of its key objectives in the negotiations. However, many Australian primary producers fought against this, as the names that the EU wanted protected as GIs would have impacted on the use of several names for goods now widely produced in Australia (such as Fetta, Parmesan, which is a translation of the GI Parmigiano Reggiano, Prosecco and others), and pushed back on any deal that would require them to rename their products. After five years of negotiation, the talks between the EU and Australia and in relation to the EU-AU FTA failed, and negotiations broke off in late 2023.

European Union-New Zealand Free Trade Agreement

In May 2024, legislation in New Zealand came into effect, which implements the European Union-New Zealand Free Trade Agreement (EU-NZ FTA), signed in July 2023. New Zealand producers, as well as businesses that import food and beverage products into New Zealand, will need to comply with the expanded regime. Under the terms of this EU-NZ FTA, New Zealand provides protection for the 1,975 EU GIs, and the EU will provide similar protection for 23 New Zealand-registered GIs for wines and spirits.

Way forward for Australia

The EU’s free trade agreements with Japan, Singapore, Canada, South Korea and now New Zealand all include a list of GIs that each party has agreed to protect. Although the negotiations with Australia fell through last year, the EU-AU FTA talks may well resume, particularly as the total sales value of European GI protected products amounts to over AU $120 billion annually. If Australia agrees, no goods other than the genuine goods will be able to use those protected names. However, even if that were to occur, any free trade agreement could well includer a ‘phase out’ period or ‘grandfather clause’, protecting businesses that have long used a term, as is the case in New Zealand.

Over the years, the adoption of a GI system has been a huge success for other countries, enhancing the reputation and value of local products and supporting local businesses. Indeed, the marketing and promotion of GI products often boosts the economic development of the various regions of origin and even encourages tourism. If Australia were to agree to an EU-AU FTA, Australian GIs would be protected in Europe and Australian businesses would enjoy the same advantages that many other countries who have agreed to protection of GIs now benefit from.

_{[1] contained in a schedule to the Competition and Consumer Act 2010 (Cth), which replaces the Trade Practices Act 1974 (Cth).}

_{[2] The Agreement between Australia and the European Community on Trade in Wine, and Protocol opened for signature 26 January 1994 and entered into force 1 March 1994.}

_{[3] The Lisbon Agreement for the Protection of Appellations of Origin and the International Registration 1958 was known for providing strong protection for a product bearing the true name of its place of origin under its special concept of “appellation of origin”.}