Bring out the wine and cheese: Enhanced protection for European GIs in New Zealand

From 1 May 2024, changes to the Geographical Indications (Wine and Spirits) Registration Act 2006 (GI Act) in New Zealand will be enacted, affording European Geographical Indications (GIs) broader protection under the New Zealand law.  This is welcome news for European GI (and NZ GI interests – more on that later!)  We explain the expanded protection regime below and how GI holders can best utilise it.

Hold the cheese – what are GIs?

A GI serves as a sign or label that indicates a product’s geographical origin, such as a town or region.  As a result, products that are associated with recognised GIs are linked to specific qualities or characteristics as a result of being produced in a particular geographical area, for example, as a result of the traditions or production methods associated with a particular geographical location.  In this way, GIs play a crucial role in safeguarding regional heritage, promoting quality, and ensuring consumer trust in products associated with specific places.

What is the current law in New Zealand regarding the protection of GIs?

Prior to the introduction of the new legislation, New Zealand law provides no sui generis system for the recognition of GIs.  GIs may be protectable through:

1. Fair Trading Act 1986 (FTA)

   Section 9 of the FTA prohibits misleading or deceptive conduct in trade. If a product falsely claims a geographical area of origin or lacks the characteristics associated with a GI, it could breach the FTA.

2. Common Law Tort of ‘Passing Off’:

   The law of passing off prevents one trader from misrepresenting their goods or services as those of another. 

3. Trade Mark Law:

   A GI may be protected in New Zealand as a trade mark, including collective or certification trade marks.

4. Geographical Indications (Wine and Spirits) Registration Act 2006:

Specifically for wines and spirits, a higher level of protection is presently available if the GI is registered under this act.  The Act establishes a registration regime for the geographical indications of wine and spirits, administered by the Intellectual Property Office of New Zealand (IPONZ) and affords additional protections, e.g. in trade mark oppositions and enforcement.

What changes are taking place in NZ from 1 May 2024?

On 25 March 2024, the European Union Free Trade Agreement Legislation Amendment Bill 2024 received royal assent in New Zealand (Amendment Act).  The Amendment Act expands the protection of GIs beyond wine and spirits registered under the current GI Act.

From 1 May 2024, New Zealand will provide enhanced protection for European Union Geographical Indications (GIs) under the New Zealand-European Union Free Trade Agreement (FTA). In summary:

1. New Zealand will register approximately 2,000 EU GIs for food, wine, spirits, and other beverages for domestic protection.These GIs are used on a wide range of products, primarily in the food and beverage sector – the full list will be available on the GI Register.

2. No person or business in New Zealand can use the GIs registered in NZ on or in relation to their products, unless they are importing a product that comes from the specific location in Europe that is related to the GI and complies with the requirements of that GI.

3. The new restrictions apply even if the product indicates its true place of origin, uses a translation or transliteration of the GI or uses the GI alongside words such as “kind”, “type”, “style”, “imitation” or similar.By way of example, “Comte-style” in relation to cheese produced in New Zealand will not be permitted.

4. Traders in New Zealand with existing stock in breach of the restrictions can continue to sell stock after 1 May 2024 until it is exhausted.This is subject to a small number of GIs that have phase out periods, which allow use for commercial purposes for a period of time. These are:

   1. 5 years for Bayerisches Bier / Bavarian beer, Münchener Bier / Munich beer, Gorgonzola, Grappa, Madeira / Madera, Sherry / Jerez and Prosecco; and

   2. 9 years for Feta and Port.

5. The restrictions are subject to ‘prior users’, namely businesses that have used the terms “Gruyère” or “Parmesan” continuously for at least 5 years before 1 May 2024 may continue to use the term.The use of these terms must be accompanied by a legible and visible indication of the geographical origin of the relevant product. For example, a cheese made in Dunedin that is marketed as “Gruyère” must clearly indicate that it originated in New Zealand.

6. There are conditions attached to the protection of certain GIs:
   1. for České pivo and Českobudějovické pivo beers, protection is only available for use of the terms in the Czech language;
   2. protection of ‘Roquefort’ does not prevent use of the compound term “Penicillium roqueforti” when referring to mould culture, as long as it does not mislead consumers;
   3. protection of ‘Armagnac’ extends to the terms “Bas-Armagnac”, “Haut-Armagnac”, “Armagnac-Ténarèze”, and/or “Blanche Armagnac” are all protected;
   4. protection of Alicante does not prevent use of the varietal term “Alicante Bouschet”, as long as it does not mislead consumers;
   5. protection of ‘Avola’ does not prevent use of the varietal term “Nero d’Avola”, as long as it does not mislead consumers;
   6. protection of Cariñena does not prevent use of the varietal term “Carignan”, as long as it does not mislead consumers; and
   7. use of “Zeeland” must come with a clear indication that the wine originates from the Netherlands. This GI does not restrict any use of the term “New Zealand”.

What are the benefits for New Zealand companies?

Under the FTA, the EU has also pledged to provide similar protection for New Zealand-registered GIs for wines and spirits.

The EU will eliminate tariffs for most New Zealand goods entering the EU from the first day the FTA enters into force.  For goods like meat and dairy, there will be an increase in quota volume and reduced in-quota tariff rates.  New Zealand exporters are expected to save around $100 million per year on tariff elimination alone.

What should GI protection authorities/owners do after 1 May 2024 in NZ?

• It has never been more important to ensure there are adequate enforcement mechanisms in place.GI protection authorities/owners should ensure that they have adequate monitoring and watch services in place for products in the market in New Zealand as well as for trade marks.It may be the case that those seeking to benefit from stronger GI protection and reputation will try and find loopholes, i.e. sailing close but not too close to the wind.
• Education, alongside promotion of GIs, in the local NZ market is key.It is important that GI holders are aware of the legislative changes and ensure that they are using the GI protections in a way that is complimentary to any existing trade mark rights (for instance, with respect to logos and certification marks), as well as with regard to existing common law rights.

What should others doing business in New Zealand do?

• If you are involved in supplying products into New Zealand that are caught by the changes, it is important to ensure that there are steps in place to deal with manufacturing and supplying those products, e.g. phasing out of products bearing certain labels.
• It is also important to review marketing collateral relating to these products to ensure compliance with not only the GI regime but the broader legal framework in New Zealand.