The recently concluded EU/NZ Free Trade Agreement (Agreement) has been widely celebrated for its potential to open new markets and strengthen trade ties. Closer examination of the reciprocity provided under the Agreement highlights the shortfall in the protection afforded to New Zealand products under our domestic Geographical Indications (GI) legislation, particularly when compared to the extensive list of European GIs now recognised in New Zealand.
A numbers game
Under the Agreement, New Zealand has agreed to recognise and protect over 2,000 European GIs, covering a diverse range of food, wine and spirit products such as Prosciutto di Parma, Champagne and Parmigiano Reggiano. In return, 23 New Zealand registered GIs – primarily for wines and a small number of spirits – have been granted protection in the EU.
Such an outcome is unsurprising given the maturity of the EU’s GI system, which has a long-standing tradition of recognising and protecting regional products. In contrast, New Zealand’s GI regime is still evolving. As a result, the initial list of New Zealand GIs protected in the EU is relatively limited, given our domestic legislation only provides for the protection of New Zealand GIs for wines and spirits. Until changes are made to our GI legislation, iconic products such as Mānuka Honey and Bluff Oysters will remain unprotected as GIs.
On a more positive note, the Agreement affirms that the word Mānuka is a Māori word used exclusively for products derived from the tree that grows here in Aotearoa New Zealand and products deriving from that tree, which signals opportunities for the future.
Protection via other means
Until changes are made to New Zealand's current GI legislation, namely the now-named Geographical Indications Registration Act 2006 (Act), New Zealand food producers will need to rely on other protection mechanisms. Certification trade marks offer one alternative given their purpose is to certify that a product or service meets certain standards such as quality, performance and origin and they are subject to rules governing their use.
While certification marks provide a valuable form of protection similar to that provided by GIs, it is important to note that the owner of a certification mark is prohibited from trading in the products or services to which the mark relates. Furthermore, the owner of a certification mark cannot own a standard trade mark for products or services of the kind certified. As a result, it is often necessary to establish an independent certifying body to administer the mark, allowing producers to remain active in the market.
The shortfall in New Zealand's domestic GI legislation is highlighted by the challenges in securing a certification trade mark for marks that are considered to be descriptive, for example, Mānuka Honey. GIs are not subject to the same examination measures as certification trade marks, given the key to securing registration of a GI under the Act is establishing the connection between the product and the geographical origin to which the product's characteristics or qualities are attributable. Opening up our GI system to protection for products beyond wine and spirits would give producers an additional layer of protection and, in some cases, the primary means of registered protection where the name denoting the origin is perceived to be descriptive.
Opportunities for change
Nonetheless, the Agreement provides a mechanism for the future addition of new GIs under Article 18.33 which allows for the expansion of the list of protected GIs, subject to certain criteria and procedures. This presents an opportunity for New Zealand producers and industry groups to document the unique qualities of their products and advocate for their recognition as GIs under domestic GI legislation.
The challenge in the coming years will be developing robust systems for verifying and controlling the use of GIs, as well as to build the necessary evidence base to satisfy the GI requirements. This will require collaboration between producer industries, legal experts and the public sector to ensure that New Zealand’s regional products are adequately protected and promoted on the world stage.
Conclusion
While the Agreement represents a step forward in trade relations, New Zealand has missed an opportunity to recognise the distinctive nature of our iconic regional products by way of protection under our domestic GI system. In the short term, businesses will need to rely on certification marks and other domestic tools to protect their brands. However, with concerted effort, there is scope to expand the list of protected GIs in the future, ensuring that New Zealand’s unique products receive the same level of protection as we have afforded EU producers in New Zealand.
Co-authored by Sophie Thoreau (special counsel) and Amy Irvine (solicitor).
