A geographical indication, or GI, identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic is essentially attributable to its geographical origin.
Australia has registration systems, alongside other mechanisms available under Australian law that:
- provide strong protection for GIs, including enforcement mechanisms
- strike an appropriate balance between protecting the rights of owners and users, and safeguarding the public interest.
How are Geographical Indications registered in Australia?
There are two ways of registering a GI in Australia
- GIs for any goods can be protected using the certification trade mark system.
- GIs for wines can be protected through a separate system dedicated to wine.
Certification Trade Marks
Certification trade marks indicate that the goods or services meet certain standards, for example of quality, composition or geographical origin. The use of a certification trade mark is generally open to other businesses if they can demonstrate that they meet the “rules” set by the owner of the mark. These rules can stipulate such things as production processes, quality standards and geographical origin.
Applications for certification trade marks are examined by IP Australia. The Australian Competition and Consumer Commission—the government body responsible for regulating competition and protecting consumers—assesses the rules to ensure they do not mislead consumers or raise competition issues in Australia. This process is generally straightforward.
Depending on the circumstances of the case, it is possible for registration of a GI as a certification trade mark to be obtained in approximately 12 months.
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 trade mark is not able to distinguish the covered goods or services from the goods or services of other persons.
Examples of European GIs currently protected by registered Australian certification trade marks include “Stilton”, “Parmigiano Reggiano” and “Parma”.
Further information on Australia’s system for certification trade marks is available from IP Australia and the ACCC.
General information for rights holders regarding suspected infringement or enforcement of their rights in Australia is also available from IP Australia.
Geographical Indications for Wines
The Australian Grape and Wine Authority (AGWA) administers a registration system for wine geographical indications through the Register of Protected Geographical Indications and Other Terms. Winemakers, grape-growers and industry associations from anywhere in the world can apply to AGWA to have GIs registered and protected.
Applications to register a GI are assessed by AGWA’s Geographical Indications Committee. Before a GI is registered, a range of factors are taken into account, including the boundary of the GI and the conditions of use. For international GIs, the Committee identifies the boundary of the GI and conditions of use that are applicable after taking into account whether the GI is protected by the laws of the country where the GI is located.
As with certification trade marks, the application undergoes a period of stakeholder comment where third parties can object to the inclusion of a GI on the Register. Objections can be made on the grounds of prior rights to the word(s) or that the GI is the name of a type of wine or variety of grapevine.
Translations of wine GIs can be protected separately after undergoing a similar process.
Over 100 Australian and more than 2,000 European wine GIs have been entered on the Register of Protected Geographical Indications and Other Terms. These GIs include terms recognised through the 1994 and 2008 Agreement Between Australia and the European Community on Trade in Wine. Examples of European wines included on the Register include “Bordeaux”, “Mosel”, “Chianti” and “Sherry”.
Further information on Australia’s wine GI system is available from The Australian Grape and Wine Authority
Examples of European Geographical Indications registered in Australia
PARMA is an example of an Italian GI successfully registered as a certification mark in Australia. There are multiple registrations featuring PARMA and owned by Consorzio del Prosciutto di Parma, including four certification trade marks (trade mark numbers 815585, 1024445, 1060071 and 1060072), covering ham and processed pig meat products that have been produced in the Province of Parma in line with certain production requirements. The rules governing use of the Parma certification trade marks are the same as those laid out in the specification for the Protected Designation of Origin “Prosciutto di Parma” in the European Union.
Another European GI protected in Australia as a registered certification trade mark is SCOTCH WHISKY (trade mark number 1532781). The Scotch Whisky Association filed an application for registration in December 2012 which was advertised as accepted in early January 2014, after assessment by the Australian Competition and Consumer Commission, and registered in March 2014 after the objection period.