6 Good Reasons to Use a Trade Mark Professional

A question often raised by brand owners is why use a trade mark professional to file an application for registration when you can do it yourself? But like trimming your fringe with the nail scissors, just because you can, doesn’t mean you should.

At first glance, filing a trade mark seems a relatively simple exercise and one where the Office is at pains to make it easy. However, the wisdom of using a trade mark professional is often not realised until there is a dispute and your register rights are not quite what you need.

When making the decision whether to file your own trade mark application directly at the Office, there are multiple factors to consider.

  1. Trade marks are a business asset and should be created with care and knowledge of underlying laws.
  2. Knowledge of laws involves not just having a passing familiarity with the technical workings of the Trade Marks Act, but also knowing and understanding how the Act works in fine detail. Knowledge of law includes being up-to-date with trends in examination and case law. This mix of subjective and objective knowledge necessarily takes focused reading, working experience and time to develop.
  3. Pre-application searching is best done by a trade mark professional to gauge the risk of trade mark infringement, and the risk of breach of common law rights created by unregistered trade marks in use. The Intellectual Property Office pre-application search function does not include an assessment of unregistered trade marks in use. The Office search may also not account for misspellings or phonetic equivalents. All these rights can seriously affect your freedom to use and protect your trade marks and must be considered at the outset.
  4. A well-filed trade mark will meet the benchmark of current laws and will also accommodate any new business requirements proposed for the future.
  5. A well-filed trade mark gives a business the room to grow under the trade mark with broadest protection while not leaving the trade mark registration vulnerable to removal for being excessively broad.
  6. Filing through a trade mark professional means register rights and renewal dates should be noted on its records. You do not have to bear the risk of forgetting to renew, or being sucked in by one of the many spam renewal agents who charge extortionate fees.

It’s Not Too Late!

Trade mark applications can be filed at any time during the branding process.

If you have doubts that your current registered trade mark is what you need, or want to review your strategy for protection of trade marks, talk to us today.

Deal or No Deal: Is Brexit Finally Here?

After several extensions and failed attempts to reach a deal, the date on which the United Kingdom (UK) will leave the European Union (EU) is now almost here and another deal is on the table. If this deal is accepted, a transition period until at least December 2020 will delay the effects of Brexit. Without a deal, it appears that the UK will exit the EU on 31 October 2019 and the effects of that exit will be immediate.

The UK’s departure from the EU may affect your rights or result in extra cost if you have any EU trade mark applications or registrations, Madrid Protocol International Registrations which designate the EU, or Hague System International Design applications or registrations covering the EU.

  • If you have a trade mark or design registration covering the EU at the relevant date: it will automatically convert to a UK national registration.
  • If you have a pending trade mark or design application covering the EU at the relevant date: you will have 9 months to file a UK national application claiming the priority date from the European Union application.

Brexit will not affect any European patent applications or patents, as the European patent system is independent of the EU.

We will contact our clients who have rights that may be affected by Brexit directly with an outline of options. But if you have any queries, let us know – we are here to help!

Fee Changes for NZ Patents and Trade Marks

IPONZ has announced new official fees for patents and trade marks in New Zealand. These will come into force on 13 February 2020.

Trade Marks

For trade marks, many fees are dropping.

The Good News

The fee reduction encourages applicants to use the IPONZ preliminary search and advice option and pre-approved specifications for goods and services.

This encourages small businesses to develop registrable trade marks in conjunction with IPONZ guidance, and there should be fewer applications on the register which are flawed at filing and have little prospect of success. The reduction in IPONZ’s workloads should in turn speed examination, meaning more registrations issue without objections.

The Not so Good News

There is a potential down-side to embracing these services.

IPONZ’s preliminary search and advice is not a comprehensive search. It does not guarantee that an approved application will not conflict with third party rights.

IPONZ does not consider rights in trade marks outside their limited search or any unregistered trade mark common law rights. This may give small businesses a false sense of security that trade marks are free to use without proper considering all potential risk areas.

The pre-approved list may also not provide protection necessary for a strong trade mark right or may result in applicants simply selecting all goods in a class without tailoring an application to fit their business plans.

The Potentially Bad News

We anticipate that the relatively cheap application process will result in an influx of applications that overclaim the area of interest or are simply speculative filings. Applicants will lodge to reserve a position on the register with no true interest in use.

Trade mark registers internationally are already seeing a dramatic increase in applications from fast-growing economies like China, and this is likely to increase even further when filing is cheap and easily done.

As the register becomes cluttered, trade mark owners will have to negotiate a larger number of trade marks when developing new brands. This can mean an increase in branding costs as oppositions, non-use and invalidity actions may be needed to clear the register of trade marks that aren’t used or that are filed without proper consideration of common law rights and existing reputations.

Overseas brand owners should also be wary of an influx of opportunistic applications endeavouring to trade off overseas reputation and take advantage of a cheap and easy filing process.

What Should You Do Now?

Filing now may save you costs in the long run.

For overseas companies, assess if New Zealand is a potential future market. Are you in Australia already and thinking about neighbouring markets?

If you are expanding or re-branding your business, think about whether you should file for your new trade mark now while others hold off waiting for cheap fees to come into effect. You may well avoid increased risk of citations by getting in early.

As always, the first step in deciding what do to is taking advice from the right person. Talk to our trade marks team today.

Patents

For patents, many fees are increasing.

2013 Act cases

Any application filed after 13 September 2014 is made under the 2013 Act. Almost all pending applications are 2013 Act cases.

For 2013 Act cases, there are two key changes.

The request for examination fee increases from $500 to $750. To avoid this increase, applicants should request examination before 13 February 2020.

IPONZ is also introducing an excess claims fee. This applies to each 5th claim from claim 30 onwards. It is due after acceptance, but is calculated based on the maximum number of claims at any point between requesting examination and acceptance. The excess claim fee can be avoided by having 29 or fewer claims during examination. Since other countries already charge excess claim fees (notably Australia and the United States), most applicants shouldn’t have too much difficulty avoiding this fee.

1953 Act cases

Divisionals of applications filed before 13 September 2014 are made under the 1953 Act.

The key change for 1953 Act cases is the doubling the filing fee to $500. IPONZ hopes this will dissuade further divisional from being filed.

Patent renewals

Patent renewal fees are increasing hugely. All the fees are at least doubled, and the 15th to 19th year fee is almost tripling to $1000 per year.

Unfortunately, there is no way to avoid this increase: renewal fees cannot be paid more than six months in advance.

The Effect

On their face, these fee changes do not seem good for New Zealand businesses. Who wants to pay more?

But, there may be a silver lining to this. Foreign competitors may avoid filing in New Zealand or may allow their patents to lapse earlier to avoid the increased costs. This is particularly likely with foreign entities who apply for patents in New Zealand purely to disrupt New Zealand-based competitors.

The fee changes could therefore actually benefit businesses in New Zealand in the long run.

What Should You Do Now?

Requesting examination now will help to minimise costs.

But the decision on when to request examination goes beyond simply saving a few dollars now. Talk to our patents team to decide how to best manage your patent portfolio.

Trade Marks Over the Breakfast Bowl

A recent application by Kellogg Company (“Kellogg”) to register its NUTRIGRAIN BOLT shape for cereal in New Zealand has been successfully opposed by Société des Produits Nestlé S.A. (“Nestle”) (“the Kellogg case”)1.

The Assistant Commissioner held that the evidence did not demonstrate on the balance of probabilities that this shape operated as a distinctive badge of origin for Kellogg.

Shape trade marks are one of a group of branding elements often referred to as “non-traditional trade marks”. This group also includes colours, smells and sounds. Nestle’s successful opposition and the comments made by the Assistant Commissioner in this decision highlight some of the difficulties faced when attempting to register shape trade marks.

What is Needed for a Shape to be Deemed Registrable as a Trade Mark?

The rule of thumb for all trade marks, including shapes, is that the trade mark must be capable of acting as a badge of origin for goods or services.

This means in practice that shape on its own must be sufficiently distinctive that consumers would connect the product to its source.

Registrability standards change overtime, however under current criteria a high level of recognition from consumers and independent traders can be required to support registration of a shape as a trade mark.

Some Shapes can be Quite Easy

Some product shapes can easily be seen to operate as trade marks. For example, specially shaped bottles and containers can be recognised as coming from certain suppliers long after all other identifying labels are removed.

As confirmed in the Kellogg case:2

While it is not necessary for the mark to be unusual or extraordinary, the more unusual the connotation or juxtaposition that the mark has in relation to the goods in question, the more likely it is that the mark has inherent distinctiveness.

But Functional Shapes and Common Shapes are Usually Hard

If a shape performs a function, for example coffee capsules that are designed to work with a particular coffee machine, then the applicant must be able to show that the same function can be performed by other shapes. The more common a shape is, the harder it will be to show that the shape connects to one trader to the exclusion of all others.

Similarly, if the Examiner can find that other traders are using the same or similar shape for goods or services, then immediately doubt is raised that this element can operate as a trade mark for a single trader.

The Assistant Commissioner in the Kellogg case confirms:3

the simple shape of the opposed mark, coupled with evidence of some actual use of a very similar shape by other traders, points towards other traders being likely to want to use a similar shape to the opposed mark for their own breakfast cereals.

Showing the Shape Operates as a Trade Mark can be Hard

The evidence necessary to secure acceptance must show that the shape operates to identify the trader. This identification must then relate to the goods covered by the application.

Bottles or other shaped packaging are usually easily able to have that connection because the consumer experiences the shape as part of the purchasing decision. But is much trickier to make this connection where product reaches the market in a cardboard box which also shows other brand elements like logos:

Following a wealth of precedent, the Assistant Commissioner in the Kellogg confirmed that it must be clear the shape alone acts as a badge of origin: “[the] manner in which the goods are presented for sale is relevant when assessing whether the shape mark is likely to be perceived as a badge of origin”4. The Assistant Commissioner acknowledges “[it] can be more challenging to establish that the public perceives a shape as a badge of origin when use of that shape has been accompanied by another distinctive and well-recognised mark”5.

Advertising which emphasises the shape can be vital, but evidence that shows the shape alongside other distinctive trade marks may not be enough to support registration.

But With The Right Evidence You Could Do It

J H Whittaker & Sons Limited successfully defended its accepted application to register the SANTE bar shape from attack by Empire Confectionery Limited (“the Whittaker case”)6.

The shape is undeniably simple, yet the Assistant Commissioner found it operated as a trade mark.

Some of the key points resulting in success in the Whittaker case were the evidence of exclusive use from the 1950s, factual evidence to show the shape was developed specially for Whittaker’s, and heightened recognition of the shape by consumers because of packaging which hugs the bar allowing the shape to operate as an immediate badge of origin.

Whittaker was able to point to its long use and established reputation to successfully argue that no other traders would have good reason to use the same or similar shape without necessarily taking advantage of Whittaker’s reputation.

Ultimately, evidence of market share and long-standing use overwhelmed any inherent lack of distinctiveness because of the simplicity of the shape.

What Should I do about my Shape Trade Marks?

If you are developing a specially shaped product that is not yet in the market place, think about design registration as an alternative to trade mark protection. Design registration will cover your shape for up to 15 years.

For other shapes which are already in use, we recommend a review of ways these shapes operate to distinguish your goods and services.

Some elements may be registrable as trade marks now. For others, a careful marketing strategy could set you up to support an application for registration of your shapes as trade marks and provide you with valuable exclusive rights to those shapes for your goods and/or services.

Careful review with an IP professional is the first step towards protecting valuable shapes for your goods. Talk to us today to see how we can help.


1 Kellogg Company v Société des Produits Nestlé S.A. [2019] NZIPOTM 17.

2 Ibid at p 24.

3 Ibid at p 29.

4 Ibid at p 35.

5 Ibid at p 36.

6 J H Whittaker & Sons Limited v Empire Confectionery Limited [2015] NZIPOTM 4.

Ellis Terry is again one of New Zealand’s top IP firms in 2019

We are very proud to report that Ellis Terry has again been ranked as one of New Zealand’s top firms for patent prosecution and trade mark prosecution in the Managing Intellectual Property IP Stars 2019. Each of our directors has also been recognised as a Star by Managing Intellectual Property: the only full service IP firm in New Zealand to achieve this. Ellis Terry is also a recommended firm for patent prosecution and patent litigation in the IAM Patent 1000 for 2019.

Emily Ellis has been recognised as a Trade Mark Star in the Managing Intellectual Property IP Stars 2019 and as a recommended expert in the World Trademark Review WTR 1000 for 2019.

John Terry has been been ranked as one of the world’s best IP strategists in the IAM Strategy 300 2019, as a Patent Star in the Managing Intellectual Property IP Stars 2019, as a recommended individual by the IAM Patent 1000, and as an expert in Who’s Who Legal: Patents 2019.

Blayne Peacock has been recognised as a Patent Star in the Managing Intellectual Property IP Stars 2019, as an Expert in Legal Media Group Expert Guides, and as a recommended individual by the IAM Patent 1000.

A Final Innovative Step: Australia Plans to Phase Out Innovation Patents

On 25 July 2019, the Australian Government introduced a bill to make a number of changes to the patents system. The changes to Crown use of patents and designs and to compulsory licences will be of interest to some. But the biggest change is phasing out innovation patents, Australia’s equivalent to a second-tier patent or utility model.

Innovation patents have a lower requirement for inventiveness than standard patents, are granted without substantive examination, and have an 8-year term. This is ideal for incremental improvements which may not justify the expense of a standard patent, but still benefit from a level of protection.

This will align Australia with jurisdictions like the United States and New Zealand which do not have a second-tier patent.

The proposed law will prevent new innovation patent applications being filed. It will not affect existing innovation patents.

This follows the Australian Productivity Commission’s report in 2016 that recommended abolishing innovation patents. Their reasoning is that the innovation patent system probably does not benefit Australian SMEs.

It is not clear when (or if) the bill will be enacted. However, there is no indication that this will be a contentious bill, and it may well pass through both houses relatively quickly.

Once the law comes into force, there will be a 12-month transition period in which new innovation patents can be filed. After that, no new applications will be allowed. With the 8-year term of innovation patents, this means that the final innovation patent, and so the innovation patent system as a whole, will likely reach the end of its life in 2028.

Reducing Reuse: Australia’s Full Court Develops the Law on Refurbishing Patented Products

The Full Court has confirmed that refurbishing patented products in Australia may result in patent infringement.

The Cast

Seiko is a Japanese company which is a large player in the printer market. Seiko sold ink cartridges in Australia under the Epson brand which were covered by the claims of an Australian patent.

Ninestar is a Malaysian company who would acquire used Epson cartridges. These would be refilled with ink and have their memory updated or replaced to allow the cartridge to be reused in Epson printers.

Calidad is an Australian group of companies, which imported the refurnished cartridges from Ninestar and sold them in Australia.

The Background

Seiko asserted that Calidad’s actions in Australia infringed its Australian patents.

In 2017, the Federal Court of Australia found partly in favour of Seiko. Burley J ruled that cartridges which had the memory replaced were infringing, but those that were merely refilled were not infringing. Both parties appealed to the Full Court of the Federal Court of Australia.

The Law

The Full Court’s judgment in Calidad Pty Ltd v Seiko Epson Corporation [2019] FCAFC 115, issued on 5 July 2019, found entirely in favour of Seiko. All of Calidad’s cartridges were found to be infringing.

The Full Court confirmed that the sale of a patented product gives a third party user an implied licence to have “all the normal rights of an owner”, which includes using or selling. However, the third party user cannot rely on this implied licence to make an infringing product.

Jagot J’s position (supported by Greenwood J) was that, because Seiko sold a single-use cartridge, the implied licence could not cover multiple uses. Ninestar’s actions made the cartridge act beyond how Seiko intended, and therefore was not covered by the implied licence:

The product which Seiko sold, in the form in which it was sold, was capable of use until the memory chip showed that the ink in the container was exhausted. By re-programming the memory chip, Ninestar enabled an embodiment of the invention, which could no longer be used, to be used. It was not repairing the cartridge. The cartridge was not damaged or worn in any way. It had simply reached the end of its intended life as a printer cartridge. Ninestar, by re-programming the memory, putting a new hole in the cartridge to enable it to be re-filled with ink, re-filling the cartridge with ink, and sealing the new and the existing hole created by the original use, manufactured a new embodiment of the invention, an act which could never have been authorised by the implied licence and could never be the subject of an exhaustion of patent rights by reason of sale. Calidad, in importing those cartridges, necessarily exploited the invention and thus infringed the patents.

[177] per Jagot J.

Yates J had a slightly different reasoning. The modifications were such that Ninestar’s refurbished products could not be said to be of Seiko’s making:

The correct approach was to ask whether, in each particular category, the modifications which Ninestar made to the original Epson cartridges altered them in such a way that they were, in substance, different articles to those which Seiko had put into the market and thus into the hands of the original owners. If so, they were not the articles in respect of which Seiko, as patentee, had given the implied licence and Calidad could not rely on that licence in respect of what were, in substance, different articles.

[293] per Yates J.

Under either reasoning, Ninestar’s action went beyond the implied licence that comes attached to the sale of patented products. Calidad’s importation of these refurbished products therefore was an infringement of Seiko’s patents.

This is a more restricted implied licence than that of the primary judge’s approach. The primary judge looked at whether Ninestar’s modifications amount of material changes to the features that embodied the claimed invention, and found that merely refilling the ink and updating the existing memory was not a material change.

The Future

Any modification of a patented product which does not strictly replace damaged parts or which was not envisioned by the original seller may be an infringement of an Australian patent.

This could have a significant effect on third party repairers or modifiers, who will now need to consider whether their actions could be patent infringement.

Calidad may try to appeal this to the High Court, which would be free to depart from the earlier decisions (including the 1911 Menck decision) which the Federal Court and Full Court felt bound by. If the High Court decides to hear the appeal, the doctrine of implied licence in Australia may yet be refurnished.

Declaration of Use for Trade Marks — Why and Why Not?

In an increasing number of countries, a declaration of use must be filed either before a trade mark is registered or at renewal. However, declarations of use are not a requirement under New Zealand trade mark law. This raises the question – is implementing a declaration of use requirement the right way to go?

The Current Situation in New Zealand

Under New Zealand law, an application for a trade mark is filed based on current, or intended, use of a trade mark. The action of filing a trade mark is considered enough to support a claim to use or an intention to use. No extra declaration or evidence to show use is required, so registrations can be obtained for broad goods and services. In addition, at renewal, a trade mark can be secured for a further 10-year term on payment of a fee without any requirement to show use on all the goods and services covered.

For this reason, unless a third party seeks to revoke a registration for non-use, trade mark registrations can exist for years without the trade mark ever being used.

The Effect of a Declaration of Use Overseas

Countries requiring a declaration of use during the application phase also necessarily require that an application is limited to the goods and services where use can be demonstrated before registration. Owners who file for wider goods or services must limit the application to area of use to secure final registration, or otherwise risk losing the entire register right under attack on the ground the claimed use was fraudulent.

Declarations of use before or at renewal also provide the trade mark owner an opportunity to review the register right and keep it relevant to current use. In this way the register is “cleaned” of trade marks no longer used on the goods/services covered by the registration without requiring third-party intervention.

In Favour of a Declaration of Use Requirement

With the increasing ease of the trade mark application process, comes the increase in risk of speculative trade mark applications.

Reduces Burden on Businesses: If legislation does not require proof of use before applications mature to registration, or at renewal, then the burden necessarily falls on businesses to “clean” the register of potentially spurious trade marks that bar their own trade mark applications.

Businesses must then factor into branding strategy the cost and delay of oppositions, invalidity actions and non-use actions, increasing cost and complexity.

Encourages Careful Branding: The additional requirement of a declaration of use before registration would encourage traders to consider the application more than a “tick-box” matter. Having an extra hurdle between application and registration should discourage speculative registrations and encourage considered decisions around branding.

Increased Weight in Enforcement: A registration secured after filing a use declaration, or a renewal supported by a use declaration, will provide at least initial demonstrable use. The underlying registration can then be assumed to be valid at the time of the declaration and this would add weight to the impact of a registration in an infringement action.

Ongoing Audit: On-going renewal declarations would also incentivise traders to keep their trade marks in use matching the trade marks on the register, and vice versa.

Against a Use Declaration Requirement

A system requiring declarations of use may stifle brand expansion given the economies of re-filing for each new iteration of a brand.

Continual Need for Registration Review: Filing for limited goods may also result in unworkably narrow register rights that do not allow for reasonable expansion of products or services offered over the lifetime of a business. Each new use could require a new trade mark application, meaning traders must bear in mind future expenditure in keeping the register up to date.

Risk that Register Rights are Sacrificed: The cost of needing to continually update trade mark registrations may mean registration of trade marks is not pursued as an avoidable expense. This could be to the detriment of the business’s ability to protect its interests in the future.

Encourages Complicated Fair Trading Litigation: If a registration for broader goods/services than those in use at the time of filing is not allowed, business owners may also be forced to adopt a litigious position through fair trading legislation or other commercial avenues because the deterrent value of a narrow registration is also less.

Excessive Legislative Hurdle: Current legislation already provides means through opposition, invalidity action and revocation for non-use where third parties can keep the register clear of trade marks unsupported by use or a genuine intention. Adding an extra legislative requirement during the application/renewal stage may be an excessive hurdle for genuine businesses.

Burden of Action Sits with Trade: Where there is no requirement under legislation to file additional documents, the costs of keepings the register clean sits with businesses who will benefit from the outcome. Public costs (through portioning of taxes) will not need to accommodate extra administrative steps at the Government level to ensure compliance with law.

Our View

While there is a risk of a cluttered register where proof of use before registration is not required, a registration limited by actual use is arguably too inhibitive.

A registration that covers an area of bona fide intended use broader than the current use provides trade mark owners with the margins of exclusivity necessary to develop a business over time. Overly restricted trade mark registrations run the risk increasing compliance cost in securing registered trade mark protection. Faced with increased cost at early stages, businesses may well decide to forego registered trade marks, leaving themselves open to uncertainty and potential cost in the future by relying on common law rights.

A good compromise may be to require a use declaration at renewal. This will allow for normal business growth and will prevent un-used trade marks remaining on the Register where the owner has no use to justify the monopoly granted by a registration.

Recommendations

The best way to ensure a wide sphere of rights is to identify a trade mark which is wholly distinctive for goods/services to be covered.

A distinctive trade mark is not only easier to register, but it is also typically easier to enforce under the Trade Marks Act and under common law rights.

Having identified a strong brand, owners should recognise that there is an art in crafting a description for trade mark applications which reflects intended use and is broad enough to provide a good sphere of rights. A well-filed trade mark will meet the bench-mark of current laws and will also be able to translate to accommodate any new requirements in the future, such as use declarations.

Your IP professional is the best person to assist you – talk to us today for assistance.

Trade Mark Renewal Reminders — Should You Act?

Trade mark owners are receiving an increasing number of offers from agents to renew registered intellectual property for New Zealand and overseas. While some of these agents look like they are offering a good deal, it is important to check that you will be getting the service you need.

Some claim: Renewal is due in the next couple of months and if you don’t instruct now you will lose your register rights.
The truth: Often the date noted is more than 12 months before renewal is due. You have plenty of time to instruct.

Some claim: They can renew for much less cost than our services.
The truth: The initial fee may be less, but having agreed to the service, the agent may issue several invoices to finalise renewal in addition to the first estimate. The overall cost is then much higher.

Some claim: The renewal will be processed once they receive your money.
The truth: The money disappears, and the renewal is never processed.

What to do: Don’t instruct without checking first!

If you filed through an attorney firm, your IP provider should have register rights and renewal dates noted on its records. If you receive a reminder and it is not from your provider, we recommend you make contact so that details can be checked, and a trusted agent can confirm what action you should take (if any).

Geographical Indications, European Trade and Indigenous Rights – a Fair Exchange?

Earlier this year the Ministry of Foreign Affairs and Trade (“MFAT”) held consultation workshops discussing the inclusion of mutual recognition of geographical indications in negotiations for a free trade agreement with the European Union (“EU”). In this forum, questions were raised around the equity of the proposed exchange. While this article discusses some of these concerns, and proposes an alternative basis for negotiation, the contents are not part of the MFAT negotiation process.

What are Geographical Indications?

The term “geographical indication” refers to a place that is recognised as the origin for product containing special characteristics. This can be a special tang to the wine, or bite to the cheese, or a special method of manufacture that lends the crystal that extra gleam.

The EU has a well-developed portfolio of produce indicative of the place of origin developed from centuries of farming and industry. Laws to identify and protect these geographical indications are already developed and recognised throughout the EU.

In the current negotiations there are over 2000 identified European geographical indications for wine, spirits and food goods.

By comparison, New Zealand (NZ) is a young country. While NZ produce is fast becoming known for its own flavours and styles, formal recognition of geographical indications is still a relatively new concept in law. NZ recognition of geographical indications is at present limited to the Geographical Indications (Wine and Spirits) Registration Act 2006 and registration has only been available since 2018.

NZ currently has 25 recognised local geographical indications for wine – including Marlborough and Matakana.

The Current Proposal

Put simply, the proposal is for mutual recognition of registered geographical indications. In exchange for recognising the EU geographical indications, the EU will provide trade advantages to NZ to make it easier to trade into Europe.

Detail around a regulatory framework is needed and will be subject of a further negotiation if the negotiation has a satisfactory outcome. It is proposed that an agreement could include recognition of future geographical indications pertaining to food and beverages.

MFAT’s Position

MFAT recognises that there is an imbalance of size and power that makes trade into Europe difficult. The impression the writer was left with after the consultation meeting, was the MFAT considers the provision of reciprocal recognition of geographical indications was a small part towards achieving an agreement with significant financial benefits for NZ.

What this Means in Practice

Many terms that may be considered a geographical indication in the EU function more as an indicator of style in NZ – for example, cheese types like camembert and feta, or effervescent wines like prosecco.

Under the current proposal EU geographical indications will be recognised in NZ unless there is a successful objection to recognition of any one term. The onus therefore is on New Zealanders to review the proposed list of over 2000 geographical indications and raise an objection to inclusion.

If NZ recognises EU listed geographical indications, producers and traders will also need to review the list of geographical indications and consider any adjustments to their use. This may mean adopting new “style” terms and taking steps to change the way consumers approach and recognise produce.

Where will NZ “miss out”

Nothing in the current scope of negotiations allows NZ to propose indigenous terms unrelated to geography for recognition by the EU.

NZ holds high cache in its Maori language term for aspects of tapu and taonga and equally for noa terms that carry with them connotations of origin and quality.

Maori words are often exploited by overseas producers, including prominent use of the word HAKA, ta moko and pukana, with seemingly no thought as to whether use of these terms is offensive.

In the event of a successful negotiation on the current grounds, NZ will recognise EU geographical indications, but the EU will not be compelled to recognise NZ’s own special linguistic terms.

A Workable Alternative?

Mis-use and offensive use of Maori terms and images often makes the news headlines. NZ provides a framework to some degree to allow for objection to use of Maori terms as a trade mark. However, in the writer’s opinion, formal recognition in a searchable register would go a long way towards enabling consumers in NZ and abroad to identify and recognised special terms.

International negotiations require a firm frame of reference in order to recognise rights with clarity. So once a register of special Maori terms exists, surely there is an ability to enter this as framework for negotiations?

What Should You Do

The benefits to NZ traders in establishing free trade into EU needs to be carefully weighed up against the potential downfalls of the proposed framework currently under negotiation. As well as questioning whether we should sacrifice the ability for local traders to continue to use terms they’ve used for years, like FETA, we should ask whether these negotiations risk being a missed opportunity to introduce means to prevent the EU from using words significant to NZ such as Maori words which arguably act as GIs.

For NZ food and wine producers: Understand the implications of recognising EU geographical indications and get advice now about your current use of style-based terms. Are these terms likely to be identified as geographical indications? Do you need to adjust your use?

For those who are keen to protection NZ’s special identity: Have your say! Not just for lawyers and producers to weigh in on negotiations – we all need to have a say when invited. Look out for opportunities to be involved in consultation process.