The Australia – USA Free Trade Agreement: impact on geographical indications

The Australia – USA Free Trade Agreement: impact on geographical indications

Outside the field of wines and spirits, neither Australia nor the USA has a comprehensive regime for the protection of Geographical Indications (GI's), i.e. indications which are recognised in a country as indicating that the goods originated in that country, region or locality and having a quality, reputation or other characteristic attributable to their geographical origin.

In the field of wines and spirits, Australia protects GI's under the provisions of the Australian Wine and Brandy Corporation Act (the AWBC Act). These provisions were enacted in 1994 to give effect to the Wine Agreement between Australia and the European Union. Under those provisions, Australia has established a Register of Protected Names, in which is entered the names of Australian declared GI's and the GI's of each of the members of the European Union which have been notified to Australia under the Agreement. In the latter category, there are several thousand European GI's registered. The AWBC Act currently confers absolute protection on registered GI's, i.e. the use of the GI is, without exception, prohibited in respect of any wine not originating in the place denoted by the GI. This is so even where there are prior existing rights such as trade mark rights. The principal of "first in time first in right" does not currently apply in respect of GI's registered in Australia in respect of wine.

In May this year Australia and USA signed a Free Trade Agreement (the AUSFTA). Under that Agreement the parties are required to provide for refusal of an application for registration of a GI on the ground that the GI is likely to cause confusion with a pre-existing trade mark right. That Agreement has been passed by US Congress. In Australia implementing legislation, the US Free Trade Agreement Implementation Bill, has passed the House of Representatives, but is being considered by the Senate. Included in that Bill are provisions for amendment of the AWBC Act to give effect the above provisions of the FTA however these amendments relate only to Australian GI's, i.e. to GI's relating to places in Australia. They do not effect the registration of European GI's which have been made pursuant to the AU/EU Wine Agreement.

Applications for registration of Australian GI's are dealt with by the Geographical Indications Committee (GIC) established under the AWBC Act. The new provisions provide that where an application is made for the registration of an Australian GI, objection to the registration may be made by persons who are the owners of or applicants for the registration of a trade mark, and persons who claim common law rights in a trade mark. Where such objection is made, the matter is referred to the Registrar of Trade Marks for determination as to whether the ground of objection has been made out. If it has been made out the GIC may not register the GI unless, in special circumstances, the Registrar of Trade Marks recommends it.