Consultations on protecting EU Geographical Indications

IP Australia has published a Consultation Paper on a possible new Geographical Indications Right.

You probably know we are not supposed to call a fizzy or bubbly alcoholic beverage made from grapes “Champagne” unless it comes from that special part of France (that’s France in the EU, not Texas).[1]

This, and a range of other prohibitions, stem originally from the Australia-EU Wine agreement (and its successors) back in the 1990s which was supposed to give our wine producers much easier access to the EU market in return for respecting their cultural properties. (I’m not sure if anyone has ever undertaken an empirical assessment to see how that worked out.)

As previously reported, our Government and the EU are in the throes of negotiating a more wide ranging Free Trade Agreement. As part of those negotiations, the EU wants Australian law to significantly broaden the number and scope of EU “geographical indications”[2] which are protected to include a further 236 spirit (as in alcoholic beverages) names and 172 agricultural and other names.

The Consultation Paper is a further round in seeking input on this proposal. Now, it is important to note, that the Consultation Paper does state:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

It appears that, in addition to protecting any EU GIs ultimately agreed, what the Government is now considering would put in place a mechanism for registration of new or additional GIs as well.

The Consultation Paper itself sets out 11 questions on which comments are particularly sought:

Registering a GI

Q.1 What types of goods should be eligible for protection as a GI?

Q.2 Should GIs filed under a new system cover a single good or multiple goods?

Q.3 Are there particular safeguards that should be considered for a new GI right?

Q.4 Under what circumstances should two rights, for example a new GI and an earlier trade mark, be able to co-exist?

Q.5 What level of detail should be required for any conditions of use, such as production methods, boundaries and what it means for a product to come from the region?

Standard of protection vQ.6 Should a new GI right extend the international standard of protection for wines and spirits to all goods? Are there other practices that should be prevented?

Using a GI right

Q.7 Who should be able to apply for a GI in Australia?

Q.8 Should those who meet the requirements of a GI be able to use the GI automatically, or should they need approval from the GI right holder?

Enforcing GIs

Q.9 Should any user be able to enforce a GI or should it be limited to the GI right holder?

Q.10 Should criminal enforcement be available for GIs registered in Australia?

Costs and Benefits

Q.11 What would be the costs and benefits to Australian industry, producers, and consumers of creating a new GI right?

Did I mention, the Consultation Paper does make clear:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

The Consultation Paper mentions that a common thread in submissions from the earlier round was the need to ensure that GIs could not be used to stop the continued use of food names already in common use. It envisages that there would be an opportunity to oppose registration on the basis that the term is a common or generic name for “a plant variety or animal breed” in Australia.

It’s not clear if the grounds of opposition would be limited to common or generic terms which are names of a plant variety or animal breed, or they are just examples of what might be common or generic terms.[3] (It should be noted that the wine producers who were using “champagne”, “burgundy”, “claret” and the like didn’t get to oppose those GIs.)

Moreover, p. 2 of the Consultation Paper does note that in the previous round of consultations people could object to the EU’s proposed lists of further GIs but, if Australia agrees to protect any of them as part of the FTA, they will not go through the application and opposition process. They will go straight on to the Register.

But remember:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

On the subject of the Register, the Consultation Paper envisages that there would be a new Register created through amendment of the Trade Marks Act 1995. Hopefully, that would bring in all the currently protected GIs as well. Hopefully, it would also be more integrated and searchable than the current hotch potch.

On the more positive side, the Consultation Paper does say (p.3) that protection would not extend to a term like “camembert” alone if the GI registered was “Camembert de Normandie”.

On the other hand, the EU is seeking protection against uses which “evoke” a registered GI. On p. 5, the Consultation Paper notes that:

in the EU a producer has been prevented from selling whisky labelled ‘Glen Buchenbach’ because ‘glen’ (meaning ‘valley’) is a term used in Scotland and was found to evoke the GI ‘Scotch Whisky’. As another example, cheese sold in packaging with images of windmills and sheep was found to evoke the Spanish GI ‘Queso Manchgeo’[4] because those images are typical of the region in Spain where the GI is produced.

Maybe camembert is made in other parts of France than Normandy? What happens if that were to change and only the Normandy producers could use camembert “over there”? How would you test whether (presumably) Australian consumers would associate windmills and sheep with Don Quixote country? Don’t the Dutch have sheep? Would it matter what kind of windmill? Would the test be what Australian consumers would understand?

According to the Consultation Paper, consultations are open until 30 November 2020. In addition, there:

  • is GI Survey (you may have to agree to the privacy policy etc. before you get in);
  • will be a Webinar – outline of GI consultation on 30 September at 12 noon to 1pm
  • will be a Virtual Roundtable – Standard of protection on 13 October at 12 noon to 1pm
  • will be Virtual Roundtable – Australian use of GIs on 15 October at 12 noon to 1pm
  • will be Virtual Roundtable – General operation of a possible GI system on 20 October at 12 noon to 1pm
  • will be Virtual Roundtable – GIs and Indigenous Knowledge on 22 October at 12 noon to 1pm

Links and more information about these via this page.

So, while:

Nothing in this consultation paper means the Australian Government has agreed, or will agree, to make any changes to its existing GI regulatory framework or policy.

we can hardly claim we are not being properly consulted.


  1. We are also not supposed to use “traditional expressions” on our wines. These matters are currently regulated under the Wine Australia Act 2013. There is a rudimentary overview with links to the Register of protected expressions here.  ?
  2. The Consultation Paper defines a “geographical indication” as “a name that identifies a product as originating in a country, region or locality where a particular quality, reputation or other characteristic of the product is essentially attributable to that geographic origin.” The definition in s 4 of the Wine Australia Act is in much the same terms, but limited to “wine goods”.  ?
  3. Although it is headed “Commercial in confidence”, a Google search on “yarra valley fetta” turned up this impassioned defence of “fetta” / “feta” as a common or generic term (but not, I think a plant variety or breed of animal).  ?
  4. I suspect that is Manchego. But it looks like Coles would be safe.  ?

GIs and proposed EU FTA

The Australian government has released the list of geographical indications (GIs) the EU is seeking protection for if/when the proposed free trade agreement goes ahead.

According to the announcement, the EU is seeking protection for 236 spirit names and 172 agricultural or other types of name.

The full list can be found via here.

The EU is seeking that included GIs be protected against:

  1. any direct or indirect commercial use of a GI name:
    1. for comparable products, or 
    2. in so far as such use exploits the reputation of the GI, including when that product is used as an ingredient; 
  2. any misuse, imitation or evocation, even if the true origin of the product is indicated or if the protected name is translated, transcribed, transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient; 
  3. any other false or misleading indication as to the origin, nature or essential qualities of the product, on the inner or outer packaging, advertising material or documents relating to the product concerned, and the packing of the product in a container liable to convey a false impression as to its origin, including when those products are used as an ingredient; 
  4. any other practice liable to mislead the consumer as to the true origin of the product.

No more mozzarella on top of your pizza, no more prosciutto around your melon balls, no more puy lentils (unless they’re imported from over there)?

If you think the inclusion of a name in the list will harm your interests, you should get your objection in by 13 November 2019.

The government says, however, you should base your objections on at least one of the following grounds:

  • the name is used in Australia as the common name for the relevant good; 
  • the name is used in Australia as the name of a plant variety or an animal breed; 
  • the name is identical to, or likely to cause confusion with, a trade mark or GI that is registered or the subject of a pending application in Australia; 
  • the name is identical to, or likely to cause confusion with, an unregistered trade mark or GI that has acquired rights through use in Australia;  or 
  • the name contains or consists of scandalous matter.

Prosecco, GIs and the possible EU FTA

The last few weeks have seen increasing rumblings within Australia about some of the consequences if a possible Free Trade Agreement with the EU goes through.

One of the main features the EU is seeking is expanded protection for the thousands of “GIs”, or geographical indications, recognised in the EU.

The potential impact of the EU FTA requiring Australian producers to stop calling their non-Italian products ‘prosecco’, a GI in the EU, has been generating some media excitement: see:

Professor Mark Davison and colleagues have a paper forthcoming in the AIPJ exploring the validity of the claims to protection [SSRN paper here]

We have been here before – when the EU-Australia Wine Agreement knocked out use of names like ‘champagne’ in return for greater access to the EU for Australian sparkling and other wines.

When the second version of that agreement replaced the 1994 version, the National Interest Assessment pointed out:

8. In 2006-07, Australia exported 421 million litres of wine to the EC with a value of $1.3 billion, and imported 10.2 million litres with a value of $168 million. Key regulatory and intellectual property issues related to trade in wine between Australia and the EC are currently regulated by the 1994 Agreement. 

9. The Agreement offers a number of advantages to Australian wine-growers, which will help consolidate their access to the EC market at a time when the domestic industry still faces concerns about an over-supply. The new Agreement also resolves several outstanding issues not covered by the 1994 Agreement, and thus will help maintain a mutually beneficial trade relationship with the EC.

10. In particular, the Agreement obliges the EC to permit the import and marketing of Australian wines produced using 16 additional wine-making techniques. It also sets out a simpler process for recognition of further techniques, with an option for disputes to be resolved by a binding arbitration. Under the 1994 Agreement, by contrast, the process for authorisation of new wine-making practices has no binding dispute settlement procedure, and no new practices have been authorised under the 1994 Agreement. This has been particularly problematic for Australian wines produced with an important wine-making technique involving the use of cation exchange resins to stabilise the wine. This technique was provisionally authorised for 12 months under the 1994 Agreement, and this authorisation has since had to be periodically extended for 12-month periods.

11. The Agreement also obliges the EC not to impose any new wine labelling requirements that are more restrictive than those which apply when the proposed Agreement comes into force. This means that industry will not face the difficulties and additional costs that might arise if the EC was permitted to introduce more onerous wine labelling requirements.

12. Finally, the Agreement obliges the EC to recognise and protect new Australian wine Geographical Indications. A Geographical Indication is a label or sign used on goods that have a specific geographical origin and possess qualities or a reputation that are due to that place of origin.

How it will play out this time, who knows? As usual, the Australian government is keeping its position largely secret from us. The EU, however, is quite open about what it is seeking (Compare DFAT here and here and here to EU proposed text here see esp. article X.22 and from X.31 and generally).

WTO upholds Australia’s tobacco plain packaging laws

The Dispute Resolution Panel has rejected the complaints by Honduras, the Dominican Republic, Cuba and Indonesia against Australia’s tobacco plain packaging laws.

Summary (just outlines the provisions contested and rejected). The complainants had:

  1. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.2 of the TBT Agreement;
  2. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.1 of the TRIPS Agreement in conjunction with Article 6quinquies of the Paris Convention (1967);
  3. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 15.4 of the TRIPS Agreement;
  4. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 16.1 of the TRIPS Agreement;
  5. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 20 of the TRIPS Agreement;
  6. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 2.1 of the TRIPS Agreement in conjunction with Article 10bis of the Paris Convention (1967);
  7. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 22.2(b) of the TRIPS Agreement; and
  8. not demonstrated that the TPP measures are inconsistent with Australia’s obligations under Article 24.3 of the TRIPS Agreement.

Full text via here.

TRIPS Agreement

On to the Appellate Body?

Productivity Commission’s Final Report

Updated to fix some broken links

The Productivity Commissions’s final report into “Intellectual Property Arrangements” has been published.

An overview and  recommendations is here.

The full report is here.

The key points sign off with a stirring call to action – or harbinger of what’s to come:

Steely resolve will be needed to pursue better balanced IP arrangements.

The Government has announced it is undertaking further consultations with us about the Commission’s recommendations and wants to hear your views by 14 February 2017. I wonder how many bunches of roses they will receive?

 

Selected links from last week

Here is a selection of links to IP-related matters I found interesting last week:

Patents

Trade marks

  • Is the US Olympic Committee’s [#TwitterBan Fair or Foul?](https://t.co/kmG0Avith) compare
    Telstra ‘Go to Rio’ campaign cleared by Federal Court, AOC case dismissed

Copyright

Remedies

  • Want An Enforceable Online Contract? Don’t Use A Footer Link Called “Reference”–Zajac v. Walker (USA)

Designs

Not categorised

Future of the profession

I hope you find some interesting. If you did or have a question, leave a comment or send me an email

Selected links from around the web

A selection of (mostly) IP-related links I found interesting last week:

Patents

US Federal Circuit Finds § 101 Patent Eligible Subject Matterin BASCOM

Patenting From China: how Chinese innovators are using the parent system

Copyright

USA: Apple’s New Music Royalty Proposal Would Make Streaming Costlier for Free Services Like Spotify

Vimeo’s Second Circuit DMCA Safe Harbor Win Over Capitol Records

Trade Mark

English High Court summarily dismisses Seretide combination color mark

Internet

USA: “Modified Clickwrap” Upheld In Court–Moule v. UPS

Trade – TPP

TPP at risk from ‘Hatch(ed)’ accusations that Australia’s data exclusivity steals US patents

Living in the future

A Technical Glitch or what might Facebook Live do to the world (as we know it)

The obsolete associate – Law21 or more AI in Big Law

Feel free to leave a comment or email me

NZexit?

The Commerce Select committee of the NZ Parliament has recommended that NZ should not continue with the proposed Single Application and Examination Processes for patent applications in both Australia and NZ. The committee, however, did support continuing with the single trans-Tasman patent attorney regime.

As IP Australia points out, Australia passed the IP Laws Amendment Act 2015 to implement this process. The Patents (Trans-Tasman Patent Attorneys and Other Matters) Bill was introduced into the NZ Parliament last year.

The NZ government’s response to the recommendation is not known at this stage.

The Consumer Guarantees in the ACL apply to computer games downloaded from overseas’ vendors

The ACCC – the consumer watchdog – has successfully sued Valve for misleading or deceptive conduct in relation to its Steam gaming platform. The representations were along the lines of statements made in the terms and conditions like:

“ALL STEAM FEES ARE PAYABLE IN ADVANCE AND ARE NOT REFUNDABLE IN WHOLE OR IN PART”.

The ACCC’s case was that such statements were misleading because they were inconsistent with a consumer’s rights to return defective goods and receive a refund. These rights arose (in the case of defective goods) since s 54 of the Australian Consumer Law incorporates into all supplies of goods in trade or commerce to consumers in Australia a guarantee that the goods are of acceptable quality. If they are not, s 259, amongst other things, confers a right of action for compensation where the deficiency in quality could not be remedied or was a major failure and s 263 provides an entitlement to a refund.

Valve is based in Washington State, USA. It argued its arrangements with Australians were not subject to the Australian Consumer Law. There were 3 reasons:

  1. Valve’s conduct did not occur in Australia and it did not carry on business in Australia;
  2. The Steam Subscriber Agreement was governed by the law of Washington State in the USA and so the Australian Consumer Law did not apply; and
  3. The software games were not “goods”.

Conflicts of law rules did not exclude Australian Consumer Law

In (very) broad terms, section 67 of the Australian Consumer Law says that the consumer guarantee provisions of the Australian Consumer Law continue to apply where the proper law of the contract would be Australia (but for the terms of the contract which provide otherwise) or the terms of the contract provide that the laws of some other country govern the contract.

As noted above, Valve’s contract with subscribers (i.e., someone who “buys” a game through Steam to download or play) provided that the governing law of the contract was the law of the state of Washington in the USA and its courts had exclusive jurisdiction.

The parties accepted that this clause could not be relied on in face of s 67. However, Valve argued that nonetheless the “proper law” of the contract was the law of the state of Washington and not somewhere in Australia.

Edelman J noted that at common law, the proper law of a contract was that which had the closest and most real connection with the transaction. This was determined by consideration of:

matters including (i) the places of residence or business of the parties, (ii) the place of contracting, (iii) the place of performance, and (iv) the nature and subject matter of the contract (437). Each of these is considered in turn.

Valve’s customers, at least those who gave evidence for the ACCC, were resident in NSW, Victoria and Tasmania. Valve, however, had its offices in Washington State, USA and did not have offices in Australia. Edeleman J acknowledged also that it was seeking to enter into contracts with people from all over the world and was aiming to do so on consistent terms.

His Honour next considered that the place of contracting was Washington State as that was the place where the electronic communication from the customer was received to form the contract. That is, presumably, the transaction was one where the customer made an offer to “buy” the game and the contract was formed when Valve accepted the transaction in Washington State.[1]

So, while the proper law of the contract was Washington State, USA, s 67 of the ACL applied.

Valve was carrying on business in Australia

Even though his Honour found that the proper law of the contract was Washington State in the USA, Edelman J nonetheless found that Valve both engaged in conduct in Australia and was carrying on business in Australia and so subject to the Australian Consumer Law.

You can see where this is going at [4]:

…. There are some difficult issues involved in determining whether “conduct” is in Australia, but even if Valve’s conduct was not conduct in Australia, the Australian Consumer Law would apply if Valve carried on business in Australia. Valve said that it does not carry on business in Australia despite Valve (i) having more than 2 million user accounts in Australia, (ii) generating potentially millions of dollars in revenue from Australia, (iii) owning, and using, servers in Australia, with original retail value of US $1.2 million, (iv) having relationships with businesses in Australia, and (v) paying tens of thousands of dollars monthly to Australian companies in expenses for running its business in Australia.

conduct in Australia

Despite the difficulties in determining where conduct takes place, Edelman J was able to find that Valve engaged in conduct in Australia. The conduct in question was the making of representations. The representations were made in the place(s) where they were received (otherwise, if no-one saw or heard the representation, there would be no conduct). Here, however, representations about “no refunds” were made directly to customers in Australia in “chat” sessions and when they signed up for accounts and “bought” games to download: [2]

…. The purchase of a game also required a consumer to click on a box that agreed to the terms of the SSA. The consumer provided Valve with his or her location as Australia at the time of purchase. Indeed, Valve priced some games differently in Australia (ts 120–121). The consumer might be told by Valve that “This item is currently unavailable in your region” (Court Book 347).

carrying on business in Australia

Accepting that “carrying on business” could have different meanings depending on the context, Edelman J accepted the approach advanced earlier by Merkel J in Bray:

… the ordinary meaning of “carrying on business” usually involves (by the words “carrying on”) a series or repetition of acts. Those acts will commonly involve “activities undertaken as a commercial enterprise in the nature of a going concern, that is, activities engaged in for the purpose of profit on a continuous and repetitive basis” ….

That was undoubtedly the case here. See the matters referred to in paragraph 4 above.[3]

Software downloads are “goods”

Computer programs are specifically included in the definition of “goods” for the purposes of the ACL. Valve argued, however, that what it was really supplying were services including the motion picures and audio which portrayed the images and sounds which the gamer interacted with.

Edelman J agreed that the film and audio files were not a computer program for these purposes, adopting the definition of a computer program as a set of instructions from the Copyright Act.

Under the ACL, however, it is not a question whether the supply is substantially a supply of services. Rather, the question is whether or not it involves a supply of goods. If so, the way the definitions are written, it doesn’t matter whether there is also a supply of services.

Valve further contended that it did not supply goods as all the subscriber had was a licence to use the software and, citing Cowell, a bare licence is purely a contractual right; not the supply of any property. One problem with this argument was that s2 of the ACL defined supply to include lease, hire or hire-purchase; terms sufficiently wide to encompass a licence. Another problem was that the argument did not take into account that subscribers could download games to play offline. They “physically” had the goods.

Valve therefore breached the consumer warranties implied by the ACL into each arrangement.

Interesting question whether foreighn companies systematically supplying goods or services over the internet to Australia will need to be registrered as a foreign company carrying on business in Australia under s 601CD of the Corporations Act? One may wonder about the practical ramifications flowing from that.

Australian Competition and Consumer Commission v Valve Corporation (No 3) [2016] FCA 196 (Edelman J)


  1. OK, that is an old-fashioned characterisation of the contractual formation, but Edelman J relied more specifically on UNCITRAL Model Law on Electronic Commerce 1996 with additional article 5bis as adopted in 1998 and the electronic transaction provisions in Australian laws such as Electronic Transactions Act 1999 (Cth) s 14B.  ?
  2. Ward Group v Brodie & Stone was distinguishable, at least because in Valve, there were (2.2 million) real purchasers. Gutnick was also distinguished as directed to different issues.  ?
  3. Catalogued again at [199] – [204].  ?

Authentic TPP text (legally verified)

Prof. Sam Ricketson pointed out to me that DFAT posted the legally verified version of the TPP on its website back on 26 January 2016.

This is the legally verified English text, but there will be equally authentic French and Spanish versions too. However, the English version prevails if there are any inconsistencies.

The legally verified text supersedes the version published back in November 2015.