We called for submissions in late 2018 on the EU’s list of wine, spirits and food product names they want recognised and protected in New Zealand as part of the EU-NZ free trade agreement negotiation.

Background

We called for submissions in late 2018 on the EU’s list of wine, spirits and food product names they want recognised and protected in New Zealand as part of the EU-NZ free trade agreement negotiation. The EU is looking for New Zealand to recognise and protect these names as GIs. This consultation closed on 19 March 2019.

Following this consultation, New Zealand officials provided the EU with an overview of objections received. Information on the submissions has not been released publicly as this may prejudice negotiations. We will review this decision as negotiations progress and look to release further information at an appropriate stage in the negotiations.

New Zealand officials also put forward for protection a list of all of New Zealand's existing GIs registered under the Geographical Indications (Wines and Spirits) Act (available at the New Zealand Intellectual Property Office (IPONZ) website (external link). There is likely to be an opportunity to put forward further names for protection under the agreement at a later stage. The EU will only accept, as eligible for protection, nominations of names that are already officially recognised in New Zealand by either registration under the GI Act or as certification or collective trademarks under the Trade Marks Act 2002. Information on how to apply for a wine or spirit GI or trade mark in New Zealand is available on the IPONZ website (external link).

The information from this consultation informed advice to Ministers on a mandate for concluding negotiations for a free trade agreement with the EU. Whether any names are protected in the EU through the free trade agreement will be subject to the final overall outcome of negotiations.

For more information on the negotiation, see our EU-NZ free trade agreement page.

As background, information on this earlier consultation process for protected names is included below.

What European product names should be protected in New Zealand?

The EU presented New Zealand with a list of names which are protected in the EU as GIs for wine (Annex 1), spirits (Annex 2) and other products (Annex 3). The EU is looking for New Zealand to recognise and protect these names as GIs in New Zealand under the EU-NZ free trade agreement. The EU list of protected names is available below:

ANNEX 1: Wines [PDF, 364 KB]

ANNEX 2: Spirits [PDF, 161 KB]

ANNEX 3: Other products [DOCX, 50 KB]

As part of the consultation process, we asked for anyone (except those established or resident in a Member State of the European Union) who had an interest in the use within New Zealand of any of the names in the EU list to provide a substantiated objection to the recognition and protection of any such name as a geographical indication in New Zealand.

Relevant New Zealand agricultural, wine, spirits, aquaculture and other foodstuff producers and relevant producer bodies were encouraged in particular to make a submission where protection of any names on the list may negatively impact them.

The scope and level of protection that the EU is seeking is:

Essentially, that the names will be protected against any use in New Zealand in relation to any products, including as ingredients, that do not originate from within the EU and that were not produced according to the relevant EU product specification (a product specification sets out the name, the description of the relevant product, the geographical area or region where at least one of the steps of production must occur and method of obtaining the product).

Specifically, that the names will be protected in New Zealand against any:

  1. direct or indirect commercial use of a protected name:

    a) for comparable products not compliant with the product specification of the protected name, or

    b) in so far as such use exploits the reputation of a geographical indication, including when that product is used as an ingredient;

  2. 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. 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. other practice liable to mislead consumers as to the true origin of the product.

The scope and level of protection the EU is seeking is part of an enhanced regulatory framework that the EU is looking for New Zealand to implement as a consequence of the EU-NZ free trade agreement. This enhanced framework would protect and recognise GIs beyond wines and spirits and to an extended level of protection, which is more in line with the EU’s GI regime than New Zealand’s current GI regime.

Disclaimer

This invitation to provide substantiated objections to the recognition and protection as a GI in New Zealand of any of the names listed in the Annexes must be understood in the broader context of the EU-NZ free trade agreement negotiations.

In scoping discussions between New Zealand and the EU prior to commencement of negotiations, the parties agreed that negotiations should aim at providing a broader framework for the recognition and protection of GIs beyond wine and spirits. But both parties recognised that an agreement on providing such framework would be subject to a satisfactory outcome in the overall agreement for New Zealand.

Providing a substantiated objection to any name listed in the Annexes does not guarantee that the name will not be recognised and protected as a GI in New Zealand under the free trade agreement. Any protection of names by either the EU or New Zealand as a GI under the free trade agreement is the subject of negotiation. For New Zealand, this will require, among other things, a satisfactory outcome in the overall agreement.

Nothing in this document should be taken as suggesting that there will be any changes to New Zealand’s current domestic regulatory regime for GI protection.

How do I provide a substantiated objection?

A substantiated objection to the protection as a GI in New Zealand of any of the names listed in the Annexes must state the grounds upon which protection of the name should not be given in New Zealand and include relevant supporting information to substantiate the ground(s) of your objection.

Substantiated objections can be made in relation to a name listed in the annexes below, as well as in relation to any transliteration, transcription or translation of a name, or a component of a name.

An objection can be made on the following grounds:

  • the name is identical, or confusingly similar, to a trade mark or GI that is the subject of a pending application or registration under either the Trade Marks Act 2002 or the Geographical Indications (Wine and Spirits) Registration Act 2006
  • the name is identical, or confusingly similar, to a trade mark or GI currently in use in New Zealand, the rights to which have been acquired through good faith use in New Zealand.
  • the name is homonymous with a GI that is the subject of a pre-existing good faith pending application or registration under the Geographical Indications (Wine and Spirits) Registration Act 2006 and that has a different geographical origin;
  • the name is used in New Zealand as the name of a plant variety, including a wine grape variety, or an animal (including fish) breed;
  • the name is used in New Zealand as the common name for the relevant good;
  • use or protection of the name in relation to the relevant good would likely offend a significant section of the community, including Māori.

Submitters were encouraged when providing a substantiated objection to identify, to the extent they were able, all likely impacts (including any costs) on them that might occur from protection being given in New Zealand to the name objected to.

What New Zealand product names could be nominated for consideration by the European Union as GI’s?

As part of this consultation process we also asked for nominations for New Zealand names that may be submitted to the EU for consideration to be protected as geographical indications in the EU. New Zealand agricultural, wine, spirits, aquaculture and food producers and producer groups had until 19 March 2019 to nominate product names in line with the process outlined below.

How are GIs currently protected in New Zealand?

In New Zealand, GIs can be protected through:

  • registration under the Trade Marks Act 2002 (by, for example, registering a collective or certification trade mark)
  • registration under the Geographical Indications (Wine and Spirits) Registration Act 2006 (the GI Act) where the GI relates to a wine or spirit.

GI protection means that the name cannot be used in trade in relation to the specified product unless:

  • at least one manufacturing step occurs within the relevant territory, region, area or locality
  • and/or the raw materials (or a specified amount of them) used in the product’s manufacture originate from the relevant territory, region, area or locality.

Under the EU-NZ free trade agreement, the EU is looking for New Zealand to recognise and protect a list of EU names as GIs in New Zealand. There is a parallel opportunity for New Zealand to provide the EU with a list of New Zealand names for protection as GIs in the EU.

What are the criteria?

The EU will consider names that are officially recognised as GIs in New Zealand by either registration under the GI Act or the Trade Marks Act 2002. New Zealand must also be able to show through documentation that these names comply with the definition of a GI. This will require evidence of a link between the geographical area and a specific quality, reputation or other characteristic of the product which distinguishes it from products of the same category produced in other geographical areas.

The EU’s GI protection regime is different to New Zealand’s GI protection regime. Under the EU-NZ free trade agreement, the EU is looking for New Zealand to implement an enhanced regulatory framework that protects and recognises GIs beyond wines and spirits and to an extended level of protection. This is included in our current consultation process.

What information must I provide when nominating a name?

Applicant name and contact details
Name, contact phone number and email address.
For registered trade marks, the applicant must be the trade mark owner.

Name/geographical indication
Where the name forms part of, or is embodied in, a logo or brand, please provide a copy of the logo or brand.

Category of the product
For example: wine, spirit, cheese, processed meat, the type of fruit or vegetable, etc.

Legal means by which the name is protected
Provide an extract of the bibliographical data for the GI or trade mark registration from the IPONZ website.

Product description, where relevant
For names protected under the Trade Marks Act 2002, provide a concise technical description of the finished product to which the name is applied and in the case of processed products, information on raw materials.

Concise definition of the geographical area

Link with the geographical area
A concise description of the link between the geographical area and the given quality, reputation or other characteristic of the product which distinguishes it from products of the same category produced in other geographical areas.
Please provide supporting evidence/documentation.

Specific labelling rules or conditions of use for the name, if any
Any rules or conditions that apply to the use of the name on the product or product label.

Disclaimer

This invitation to nominate names for protection in the EU as GIs must be understood in the broader context of the EU-NZ free trade agreement negotiations.

In scoping discussions between New Zealand and the EU prior to the start of negotiations, both parties agreed that negotiations should aim at providing a broader framework for the recognition and protection of GIs beyond wine and spirits. But both parties recognised that any agreement on providing such a framework would be subject to a satisfactory outcome in the overall agreement for New Zealand.

There is no guarantee that any names nominated for protection in the EU as GIs through this process will be granted protection in the EU. Any protection of names by either Party as a GI under the free trade agreement is the subject of negotiation. For New Zealand, this will require among other things a satisfactory outcome in the overall agreement. For the EU, this will require among other things the EU being satisfied that a New Zealand name operates as a GI.

Nominating a name for protection in the EU as a GI under the EU-NZ free trade agreement does not, in any way, change or affect the existing legal protections given to the name in New Zealand.

Nothing in this consultation should be taken as suggesting that there will be any changes to New Zealand’s current domestic regulatory regime for GI protection.

There is no fee payable for nominating a name for protection in the EU as a GI.

What if I have only recently applied to register my name?

As part of the EU-NZ free trade agreement negotiations, we are discussing a procedure whereby New Zealand or the EU may add new names to their list of GIs to be protected in the other party’s jurisdiction in the future, after the free trade agreement has been concluded and entered into force. At that point, a further invitation for names to be nominated for protection in the EU as a GI will be made and periodically thereafter.