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New Zealand Takes Next Steps towards Expanded Geographical Indication Protection

IP Enforcement & Litigation
  • New GI Legislation proposed to meet EU-NZ FTA Obligations
  • Expanded enforcement mechanisms
  • 2000 additional geographical indications to be protected
  • Those engaged in NZ trade, particularly in foodstuffs and beverages, should review expanded list
  • Deadline for comment 15 February 2024

Summary

The New Zealand Government has now introduced into the New Zealand Parliament legislation to implement New Zealand’s obligations to expand protection for geographical indications under the European Union-New Zealand Free Trade Agreement (EU-NZ FTA).

While the majority of the proposed amendments to New Zealand’s geographical indications protection regime relate solely to geographical indications that are the subject of the EU-NZ FTA, the proposed amendments significantly expand on the mechanisms available for all parties to enforce registered geographical indications in New Zealand (including independent civil enforcement provisions and new administrative and border control measures).

However, and importantly, the new legislation does not provide for registered protection of geographical indications beyond wines and spirits other than for those geographical indications set out in the EU-NZ FTA.

Parties engaging in trade in New Zealand, particularly in foodstuffs and beverages, should carefully consider how the new legislation will affect their activities in New Zealand, particularly in view of the close to 2000 additional geographical indications that will be protected in New Zealand once the EU-NZ FTA comes into operation.

Submissions to the Select Committee scrutinising the legislation are currently open, and close on 15 February 2024.  If the Bill passes the New Zealand Parliament, it is anticipated that the amendments will come into effect by the end of this year.

Introduction

On 26 January 2024, the New Zealand Government introduced the European Union Free Trade Agreement Legislation Amendment Bill (the Bill) into the New Zealand Parliament.  The Bill comprises amendments to various existing New Zealand legislation necessary to allow for New Zealand to comply with its obligations under the recently signed European Union-New Zealand Free Trade Agreement (EU-NZ FTA).  The Bill can be found here.

The Bill is of particular interest to intellectual property practitioners as it contains significant amendments to the Geographical Indications (Wine and Spirits) Registration Act 2006 (GI Act) that are necessary as a result of New Zealand’s agreement to protect close to 2000 additional geographical indications for wines, spirits and foodstuffs as part of the EU-NZ FTA.

The amendments proposed in the Bill are consistent with the decisions made by the former New Zealand government (which can be found here) on amending the GI Act following consultations held by the Ministry of Business, Innovation and Employment in early 2023.

Key Amendments to the GI Act

Some of the key amendments to the GI Act (which will be renamed the “Geographical Indications Registration Act 2006”) proposed under the Bill are as follows.

Expanded Definition of “Geographical Indications”

For the purposes of the GI Act, a “geographical indication” will be redefined as:

“an indication that identified a wine or spirit or other good (as the case may be) as originating in the territory of a country, or a region or locality in that territory, where a given quality, or reputation, or other characteristic, of the wine, spirit or other good is essentially attributable to its geographical origin”

While these amendments take into account the inclusion of non-wine and spirit geographical indications under the NZ-EU FTA, it will still not be possible for parties to directly register geographical indications for goods other than wines and spirits in New Zealand.   This approach is consistent with the outcome of the consultations, where the majority of submissions from New Zealand based contributors did not support the expansion of the registered geographical indication scheme beyond wine and spirits (except as required under the NZ-EU FTA).

Two Geographical Indication Registration and Protection Schemes

The amended GI Act will effectively constitute two geographical indication registration and protection schemes under the same Act and on the same Register:

  1. The existing regime for the registration of geographical indications for wines and spirits (referred to as “New Zealand geographical indications” and “foreign geographical indications”) will remain in place with minimal amendments to its current operations (including as to restrictions on use), and these registered rights will remain as Part 2 of the current Register of Geographical Indications.

Registrations under Part 2 are subject to the payment of registration and renewal fees, and can be cancelled by the Registrar or a Court under certain circumstances (such as disuse in country of origin).

  1. A new regime for the registration of geographical indications that are required to be protected under the EU-NZ FTA (referred to as “EU FTA Geographical Indications”) will be in place under Part 4 of the GI Act — the Bill provides for all geographical indications listed under the EU-NZ FTA to be automatically and immediately included (with any relevant conditions) as a new Part 4 of the Register of Geographical Indications.  The GI Act will also include provisions for the recognition and amendment of geographical indications as required under the EU-NZ FTA, with separate provisions relating to examination and opposition of geographical indications to be protected through this process.

 

Importantly, and as required under the EU-NZ FTA:

  1. registrations under Part 4 are not subject to registration or renewal fees, and can only be removed from the Register if the Secretary of Foreign Affairs and Trade notifies the Registrar that the relevant geographical indication is no longer protected under the EU-NZ FTA; and
  2. the restrictions of use of an EU FTA Geographical Indication are different to the restrictions for New Zealand geographical indications and foreign geographical indications, particularly with respect to exceptions on the relevant restrictions.

New Enforcement Mechanisms

The amended GI Act will provide for new enforcement mechanisms to prevent the misuse of any registered geographical indication in New Zealand:

  1. Civil Enforcement — The amended GI Act will allow for any person “with an interest in upholding the restrictions on use of the registered geographical indication”, as well as the Chief Executive of the Government Department responsible for the GI Act (Chief Executive), to commence proceedings in the High Court to seek relief for a breach of a restriction on use of a registered geographical indication.  Relief granted in a successful action will include injunctions, damages/account of profits/additional damages, erasure orders and delivery up.  There will also be unjustified threats provisions.Currently, there is no separate civil enforcement regime for breaches of the restrictions of use, with any breach currently actionable as “misleading and deceptive conduct” under section 9 of the Fair Trading Act 1986.
  2. Administrative Enforcement — The amended GI Act will also create an administrative enforcement regime, with the Chief Executive having the power to appoint GI Officers to enforce compliance with the restrictions on use of a registered geographical indication.  The GI Officers will have information gathering, entry and inspection, search warrant and other similar powers, and will have the power to issue directions against persons who are contravening the restrictions on use.  A failure to comply with a direction will be punishable by either an “infringement fee” or a court imposed fine.
  3. Border Protection Measures — Similar to the border protection measures available to registered trade mark owners, the amended GI Act will allow for registered geographical indications to be recorded with New Zealand customs, and customs officers will have the power to investigate, inspect. Intercept and detain goods that are suspected to be in breach of a restriction on use of a registered geographical indication.

Costs Recovery

In addition to costs recovery through registration and renewal fees for registered geographical registrations registered under Part 2 of the Register, the Bill also includes amendments to the Trade Marks Act 2002 to allow fees obtained under that Act to be used to maintain the Register of Geographical Indications.

Takeaways

Should the amendments to the GI Act proceed in their current form, they will significantly change the way in which geographical indications are protected in New Zealand:

  1. While the decision to not expand the scope of “direct” geographical indication registrations beyond wines and spirits will be disappointing to some producers, those who do have the benefit of a registered geographical indication will be able to take advantage of the new and greatly expanded enforcement mechanisms, particularly the ability to record geographical indications with customs and to commence civil proceedings for breaches of restrictions of use in their own right.
  2. Businesses who trade in the New Zealand marketplace, and particularly those who export foodstuffs and beverages in New Zealand, will need to carefully scrutinise the Register of Geographical Indications and the restrictions on use of a registered geographical indications before engaging in their activities, as a breach of the restrictions will put them at a significantly greater risk of adverse action (including administrative action) as compared to the current regime.

The Select Committee of the New Zealand Parliament is currently accepting submissions on the Bill (including the amendments to the GI Act) until 15 February 2024, and submissions can be made here. Those with an interest in geographical indications, particularly in foodstuffs and beverages, should consider the impact of this legislation and provide feedback by the deadline.

If the Bill passes the New Zealand Parliament (which is expected), it is anticipated that the amendments will come into effect by the end of this year.