A geographical indication (GI) identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.
Examples of GIs
Examples of GIs protected in Australia for cheese are:
- Grana Padano
- Parmigiano Reggiano.
Each of these types of cheese comes from specific European regions.
Parma is another GI protected in Australia, this time for ham. This means that ham cannot be called Parma in Australia unless it is made using a specific recipe and process and produced in a specific part of Italy.
The process for registering a GI in Australia
Generally, Australian GIs are protected as certification trade marks. There is also an additional, separate way to register GIs for wines which is administered by the Australian Grape and Wine Authority.
Certification trade marks
Certification trade marks are an ideal way to protect geographical indications (GIs) in a variety of areas including wine and spirits as well as other goods like meat and dairy products.
A certification trade mark indicates that a trader's goods or services meet an official set of standards. A certification trade mark could refer to any characteristic of a good or service, with some common examples including the quality, content, manufacturing method or geographic origin. In the case of GIs, a certification trade mark would be used to indicate the geographical origin of the goods and any associated quality, reputation or characteristic.
An application to register a GI as a certification trade mark is made to IP Australia. The applicant for a certification mark must have legal personality, and the application should include a representation of the certification trade mark, along with the rules for use. A GI should relate to a particular good. A certification trade mark that could be applied to all goods, or a class of goods, from a particular region may not function as a GI.
We will then assess whether the application meets legal requirements. Once we are satisfied all requirements have been met, the application is forwarded to the Australian Competition and Consumer Commission (ACCC) to ensure the application rules are consistent with competition principles and in the public interest. The ACCC may ask for changes to the rules before they will approve them.
As with regular trade marks, third parties are able to object to the registration of certification trade marks, including on the basis of prior use or that the certification trade mark is not able to distinguish the covered goods or services from the goods or services of other persons.
Once terms are registered as GIs in Australia, they can only be used on goods that have been produced in accordance with the rules governing their use.
Benefits of registering a certification trade mark to protect a GI
GIs can be a powerful marketing and branding tool, with their value increasing as consumer recognition grows. GIs can create expectations and assurances about the quality or characteristics of products and may attract a price premium.
Consumers can benefit from GIs as it gives them assurance of the origin or production standards of the products they purchase.
Producers may benefit from using a GI because the GI indicates the origin, and associated quality, reputation, or other characteristics of their products. A GI can make it easier to stop others from free-riding on the valuable reputation of a region.
Registered owners of a GI protected under the certification trade mark system in Australia:
- may give the Australian Border Force a notice objecting to the importation of goods that infringe the registered GI
- are in a stronger position to stop unauthorised people from using the GI.
A registered Australian GI can be protected in other countries. Australia is a contracting party to the Madrid Protocol, which simplifies the process for protecting trade marks in other contracting countries. However, protection of a GI overseas is subject to the laws of the country concerned and may be separate from that country’s trade mark system.
GIs from other countries can also be protected in Australia. A number of GIs from other countries are registered under Australia’s certification trade mark system and under the Australian Grape and Wine Authority Act. These include registrations by international producers and Australian importers.