What is the difference between Parmigiano Reggiano and parmesan? What are the characteristics of Darjeeling tea that distinguish it from regular tea? Does Scotch Whisky actually have to be produced in Scotland?
It all has to do with geographical indications.
- What is a geographical indication?
- Australia’s GI system
- Using the certification trade mark (CTM) system to register a GI
- Examples of GIs
- Benefits of GIs
- Difference between a place name and a GI
- Difference between a standard trade mark, CTM and GI
- Who can apply for a GI?
- Rules that have to be provided
- Applying for a GI
- Length of GI protection
- Managing and enforcing a GI
A ‘geographical indication’, or ‘GI’ identifies a good as originating in a specific region where a particular quality, reputation or other characteristic of the good is essentially attributable to that geographic origin.
The attributes of the goods may derive from either:
- the method of production
- the ingredients used
- the environmental or agricultural features of the region which give the product its distinctive qualities
- a strong reputation that may have developed in the region for producing a particular good of a certain quality over time
GIs have rules that set out the qualities or characteristics of the good on which the GI is allowed to be used. These rules provide assurance to consumers that they are purchasing a product with specific qualities. Producers must follow these rules in order to use the GI.
Across the world, GIs are applied to a wide range of goods, from cheese and meats to wines, silk and pottery. GIs indicate a specific good (e.g. Barossa for wine, or Parma for ham). Some GIs registered in Australia are:
- Darjeeling for tea
- Parmigiano Reggiano for cheese
- Scotch Whisky for spirits and spirit based beverages
- Mount View for wine
Because each of the above terms are registered as GIs, these terms cannot be used in Australia on the indicated products unless those products originate from the specified region and are produced in line with the rules.
For example, in countries where the term ‘Scotch Whisky’ is protected as a GI, that term can only be used if the whisky is distilled in Scotland and using the specified recipe and process set out in the rules governing the GI.
Australia has two systems for GI registration:
- GIs for all goods can be registered using the certification trade mark system (CTM).
- GIs for wines can also be registered under a separate system, administered by Wine Australia.
The CTM system is provided under the Trade Marks Act 1995 (Cth), while the Wine Australia Act 2013 (Cth) provides the legislative framework for the wine GI system.
A CTM shows that goods or services meet specified standards. The standards are contained in a set of rules that must be provided during the application process. The rules can specify:
- content or
- production methods.
In the case of GIs, the rules will relate to at least the geographical origin of the goods and may contain additional quality or processing standards. The rules could state, for example, that a type of cheese must be made using only milk from cows within a certain geographic location in order to benefit from using the GI.
Applications for CTMs including for GIs, are first examined by us to make sure they meet trade mark requirements. The rules are then provided to the Australian Competition and Consumer Commission (ACCC) to assess under competition and consumer laws. After examination and assessment by the ACCC the application will be opened for public comment and published for opposition.
If there is no opposition and a CTM is successfully registered, the owner has the right to use it and allow other producers to use the CTM, so long as they comply with all the requirements.
A CTM owner need not use the CTM themselves but they must control the use of the CTM by others, including ensuring the CTM is applied only to goods that possess the particular quality or meet a specified standard.
The Australian Wild Abalone (AWA) GI is protected under the CTM system. To use the mark, producers must wild catch abalone from Australian waters, and must comply with the AWA Quality Assurance Code of Practice. Using this mark:
- prevents free riders from capitalising on or diminishing the reputation of Australian abalone by passing off poorer quality abalone as Australian.
- gives consumers confidence they are purchasing abalone that has been sustainably caught and processed under quality standards.
Read the full rules for using the AWA GI.
Hilltops, a region in Cootamundra NSW is a geographical indication for wine that is registered under both the CTM and wine GI systems.
Only wines consisting of a grape content of at least 85 percent grapes sourced from within the region defined as Hilltops are legally able to use the GI.
By preventing others inappropriately leveraging on the valuable reputation of the region, the GI:
- protects the investment of winemakers in the region
- provides a guarantee to consumers that the wine does indeed come from the Hilltops region and that it meets the quality standards.
Read the rules for using the Hilltops GI.
When well managed and promoted GIs:
- can be a powerful marketing tool- their value increasing as consumer recognition grows
- create expectations and assurances about the quality or characteristics of products and may attract a price premium
- benefit producers because it can be easier to stop others from free-riding and undermining the valuable reputation of a region
While many Australian businesses use location names to promote their goods, this does not mean they are GIs. A GI is intellectual property and provides its owner/s with exclusive rights over its use.
- A geographical place name simply describes the place a business is based in or where a good is sourced
- As mentioned above a GI must indicate goods which possess a special characteristic attributed to the geographic location where they are produced
There are also occasions where over time a region has developed a strong reputation for produce of a certain quality. For example, a banana grower in Brisbane may wish to promote his fruit as Brisbane bananas.
Even if these bananas are actually grown in Brisbane, this alone does not make ‘Brisbane’ a GI. The bananas would also need to have some special characteristic or reputation (such as sweeter, or larger, or thinner) that is attributable to the Brisbane area. The link between the special characteristics of the bananas and the geography or reputation of the region is what creates a GI.
- A standard trade mark informs consumers about the commercial source of a good or service.
- CTMs and GIs indicate or distinguish the good itself.
Standard trade marks and CTMs/GIs are typically used in conjunction with each other.
For example, in the marks reproduced below, SARACEN ESTATES, GRACE FARM and WATERSHED all indicate the trade source of the wine, while MARGARET RIVER is a registered GI that indicates its geographical origin. Only wines made in the Margaret River region can legally use this GI.
Although a GI can be owned by any legal entity, management, control and enforcement of a GI, which are the responsibility of the owner, can be complex.
Sometimes it is best that these issues be managed by:
- a group of producers within a region that form an incorporated association in order to register and manage the GI
- another central organisation or
- a local or state authority with the power to preserve the right of all producers in the GI region and protect against misuse of the GI.
If forming an incorporated association, the producers in the relevant region need to agree on standards and collaborate in order to develop, maintain and promote the GI. Before drafting the rules, producers should determine:
- the geographic boundaries for production
- the techniques and standards that apply
- how to promote the GI.
If you are thinking about seeking GI protection it’s a good idea to seek advice from a registered trade mark attorney. If you have not used an attorney before you might also like to see our 'engaging an attorney' toolkit.
An application for a GI CTM must be supported by a set of certification rules.
The rules specify the requirements that goods must meet for the GI to be applied. These requirements could relate to:
- geographical origin
- production methods or
- a combination of all these
The rules will be independently assessed by the ACCC to ensure:
- competition principles
- adherence to fair trading policies
- that there is no detriment to the public interest.
The rules must specify the:
- certification requirements that goods must meet for the CTM to be applied
- process for determining whether goods meet the certification requirements
- attributes that a person must have to become approved to assess whether goods meet the certification requirements
- the requirements that an owner or approved user of the certification trade must meet to use the certification trade mark
- other requirements about the use of the certification trade mark by the owner or approved user of the certification trade mark
- procedure for resolving a dispute about whether goods meet the certification requirements
- general procedures for resolving a disputes
Once the rules have been assessed and approved by the ACCC the owner of the GI is responsible for ensuring compliance. It is critical to the success of a GI that compliance with the rules is monitored to ensure quality is maintained.
You lodge your application with IP Australia.
To apply for a GI you follow the process for standard trade marks with a few extra steps:
- File a CTM application including the rules for your certification scheme
- The application will be examined by a trade mark examiner to ensure it complies with trade mark legislation.
- If the application meets the requirements under the trade marks legislation the certification rules are sent to the ACCC for independent assessment. The GI will be accepted once the ACCC approves the rules. See more information about the role of the ACCC in assessing CTMs .
- Once accepted, anyone can oppose the GI on a number of grounds. If there is no opposition, the GI will be registered and published on the trade marks register.
GI registration lasts for 10 years from the filing date. The period can be renewed indefinitely if renewal fees are paid every ten years. If a GI is not renewed it will lapse and protection will cease.
Effective marketing and promotion of the GI is critical to its success. Owners need to educate consumers about their GI goods and why the goods are better than similar goods from elsewhere.
As a GI builds its reputation there is greater potential for misuse and infringement. Owners should:
- monitor the marketplace
- ensure that approved users of the GI continue to comply with the certification rules.
As a legal right, a GI can create a competitive advantage enabling GI producers to differentiate their goods from those of non-GI producers. A registered GI provides the owner with the right to take legal action to prevent its unauthorised use.
The Trade Marks Act provides for civil remedies against infringements including injunction or damages. A GI that is registered as a CTM can also be notified to the Australian Border Force to protect against and seize imports that would infringe the GI. An IP specialist, such as a trade mark attorney, can advise you of your enforcement options.
In Australia a GI can be cancelled for a number of reasons including that the GI:
- is not capable of distinguishing
- is confusingly similar to an earlier trade mark or GI
- is likely to deceive or cause confusion.
A GI could also be cancelled on the basis that it has become known as the generally accepted description or name of the relevant good (or has become generic).