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.  ?

Geographical indications

Bennett J has dismissed the Bavarian Beer (trade) association’s opposition to the Dutch company, Bavaria NV’s application to register the Bavarian Beer trade mark.

(The application is in black and white)
(The application is in black and white)

Her Honour found:

182 In summary:

  •  
    • The trade mark is inherently adapted to distinguish Bavaria NV’s goods from those of other traders and does so distinguish.
    • If the trade mark were only inherently adapted to distinguish Bavaria NV’s goods to some extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(5) of the Act.
    • If the trade mark were not inherently adapted to distinguish Bavaria NV’s goods to any extent, there would be insufficient evidence to find it capable of distinguishing Bavaria NV’s goods pursuant to s 41(6) of the Act.
    • I am not satisfied that the trade mark connotes that Bavaria NV’s product comes from Bavaria or that it has certain characteristics attributable to a Bavarian origin. I am not satisfied that the use of the trade mark would be likely to deceive or cause confusion or that it would be contrary to law.
    • GENUINE BAVARIAN BEER and BAYERISCHES BEER are geographical indications for the purposes of ss 6 and 61 of the Act. Neither of these geographical indications equate with “Bavaria”. Section 61 does not refer to a sign that is substantially the same as or deceptively similar to a geographical indication. The trade mark does not contain a sign that is a geographical indication for the purposes of the Act.
    • Even if the trade mark did contain a sign that is a geographical indication for the purposes of the Act, Bavaria NV would succeed in raising the defence under s 61(2)(c) of the Act.
    • There is no discretion under s 55 of the Act to refuse to register a trade mark if none of the grounds of opposition are made out.

Professor Davison looks at the implications for (non-wine) GIs here.

I’ll just add that the Bavarians had argued s 55 of the Trade Marks Act conferred a discretion to block an application independently of the grounds of opposition. Hence the last bullet point above.

Of course, the last time I went to Europe, the Netherlands did seem to be quite some distance from Bavaria. I’m not sure what the status of the war (between the 2 sides) in Germany is.

Bennett J’s decision in Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428