Know-how series: Geographical Indications

Know-how series: Geographical Indications

What are Geographical Indications?

Geographical Indications (GIs) are a unique form of collective intellectual property right that show when a product comes from a specific place and has qualities or a reputation linked to that location.

Why do they matter?

GIs can signal authenticity and quality of products, enhancing reputation and marketability to help them stand out from competitors in the market.  This can make them more appealing to buyers, allowing producers to charge higher prices.

This can in turn encourage investment and stimulate growth in local communities, and help to promote sustainable practices, preserve traditional knowledge and heritage, and even boost tourism.

Classic example

Think of ‘Champagne’ – a sparkling white wine famously identified by the region it originates from in northeast France.

How to register a GI in New Zealand

In New Zealand, GIs for wines and spirits can be registered under the Geographical Indications Registration Act 2006.

Some notable GIs already registered in New Zealand include:

• Marlborough, Martinborough and Waiheke Island (for wine)
• Bordeaux (for wine)
• Scotch Whisky (for spirits)

So, if you make wine or spirits in a particular region, that gives your product certain qualities or characteristics, you may be able to register a GI to protect it from misuse and stop others trying to take advantage of the region’s reputation.

How to apply

Any wine or spirits producer, trader, or association can apply through the Intellectual Property Office of New Zealand (IPONZ)

Before applying:

1. Check the New Zealand Geographical Indications Register to make sure it isn’t already registered.

2. Search the New Zealand Trade Marks Register for any identical or similar names.

3. Gather strong evidence to support your application, like:

• Geographical data (such as co-ordinates of proposed GI boundaries)
• Geographical features (topography, climate data such as annual rainfall and sunshine hours, wind direction, nearby or underground waterways, gradient, accessibility)
• The history and background of the area and how that contributes to the reputation, quality, and characteristics of the goods or services produced there
• Methods of production (where that contributes to the quality or characteristic of product).
• Specific qualities and characteristics of the goods or services (such as flavour profile).
• Any supporting evidence of the reputation of the product.

All going well, your GI could be registered within 6 months.  Once a GI is registered, it lasts for 5 years, and can then be renewed for further 10 year periods.

Using a GI on your labels

To use a GI on your product, it needs to meet the rules set for that GI.

This includes being produced within the GI boundaries or following the specific production processes and procedures for that GI.

For wine made in New Zealand:

• At least 85% of the grapes must come from within the GI boundaries;
• The rest of the grapes must be from New Zealand; and
• The GI is used in accordance with its registration.

For spirits made in New Zealand:

• The spirit must have been made within the GI boundaries; and
• The GI must be used in accordance with its registration.

A foreign GI may be used on wines, spirits and certain food products in New Zealand when:

• The product originates from a place within the GI boundaries; and
• The foreign GI is used in accordance with its scope of protection in its country of origin and its registration in New Zealand.

New Zealand–European Union Free Trade Agreement

In 2023, New Zealand signed a free trade agreement with the European Union (known as the EU FTA).   This added almost 2,000 new EU GIs on the New Zealand Geographical Indications Register from 1 May 2024, including over 150 GIs for food products such as:

• Feta
• Kalamata olives
• Mozzarella

A gradual phase-out period was put in place for a small number of EU GIs, allowing businesses that have continuously used specific EU GIs in New Zealand to phase out their GI use, so long as the actual geographical origin is clearly marked out.

For example, cheese made in Central Otago that is marketed as ‘feta’, which is a GI originating from Greece protected under the EU FTA, must clearly indicate it is New Zealand-originated feta.

The phase out periods vary for each GI and a full list of GIs to be phased out can be found on the IPONZ website.

Interestingly, the Geographical Indications Registration Act 2006 hasn’t been amended to allow for registration of other food GIs – so we won’t be seeing a GI registration for Bluff oysters anytime soon!

Unauthorised use of GIs

Use of a GI without complying with its conditions or requirements would breach the Geographical Indications Registration Act 2006, which can be enforced by the Ministry of Primary Industries or through civil proceedings, and may also constitute passing off, be misleading under the Fair Trading Act 1986, or otherwise constitute trade mark infringement (if the GI is a registered trade mark).

Unfortunately, terms like “Feta-style” or “Feta-like” would still infringe a GI.

Difference between GIs and trade marks

A standard trade mark is a ‘badge of origin’ that establishes goods or services as coming from one particular trader, distinguishing that traders products from others – they are inherently linked to the reputation and identity of that singular trader.

GIs, on the other hand, are collective rights and have no single ‘owner’. Rather, any producer or trader who complies with the governing requirements of a GI may label its products with that GI.

That said, there is some overlap with collective and certification trade marks.

A collective trade mark can be registered by a group or association, to be used by its members to show they belong to it (think Master Plumbers).

A certification trade mark can be registered for use in relation to any product or service that meets certain standards (like being organic, vegan or fair trade), regardless of who makes it.

GIs can be registered as collective or certification trade marks where they’ve not already been registered under the GI legislation.

For example, ‘Gorgonzola’ has been registered as a certification trade mark in New Zealand with accompanying regulations that specify how a cheese can qualify for the ‘Gorgonzola’ certification mark. The Consortium for the Protection of Gorgonzola Cheese applied to register ‘Gorgonzola’ as a certification mark back in 2015, well before the EU FTA came into force.

Certification and collective trade mark registrations are an alternative way of protecting GIs that relate to products other than wine and spirits in New Zealand.

What now?

If you need advice, are wondering what your rights are in relation to a GI, or are simply seeking recommendations with anything GI-related, get in touch!

We can help you:

• Understand GIs
• Register and protect a GI
• Identify and prevent unauthorised use of a GI

Special thanks to Partner Katy Rostovitch (née Stove) and Solicitor Phoebe Calder for preparing this article.

For specialist advice on any intellectual property query, please contact a member of our Intellectual Property team.

Disclaimer: The content of this article is general in nature and not intended as a substitute for specific professional advice on any matter and should not be relied upon for that purpose.