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Ayu, Miranda Risang --- "How Does Australia Regulate the Use of Geographical Indication for Products Other than Wines and Spirits?" [2006] MqJlBLaw 1; (2006) 3 Macquarie Journal of Business Law 1

How Does Australia Regulate the Use of Geographical Indication For Products Other than Wines and Spirits?

MIRANDA RISANG AYU[∗]

Abstract[**]

This paper explores the approaches taken by Australia to regulate the use of geographical indication for products other than wines and spirits in line with the general geographical indication protection provided in art 22 of the Agreement on the Trade-Related Aspects of Intellectual Property Rights 1995 (TRIPS Agreement). In terms of the TRIPS Agreement, a geographical indication is an Intellectual Property Right that regulates the mark of a product whose quality and character can be essentially attributed to its place of origin.

In Australia only the use of geographical indication for wines and spirits is explicitly regulated (via the Australian Wine and Brandy Corporation Act 1980). This paper demonstrates that Australia does in fact also regulate the use of geographical indication for products other than wines and spirits. The legal framework in the United States of America, which parallels that in Australia in some respects, is also referred to in the course of this review.

I Introduction

Along with the United States of America and European Community,[1] Australia was a leading country in the process leading to the Multilateral Agreement on the Trade Related-Aspects of Intellectual Property Rights (TRIPS Agreement).[2] Between 1986-1994, Australia supported including the controversial subject matter of geographical indications in such agreement,[3] and became a signatory to it on 1 January 2005. In Australia, the only law dealing directly with geographical indication is the Wine and Brandy Corporation Act 1980. The major Australian geographical indications are wines. On the face of things Australia regulates the use of geographical indication only for wines and spirits.[4]

This paper explores how Australia in fact protects the use of geographical indication for products other than wines and spirits, which is assumed to be incorporated in any provision that is in line with the general geographical indication protection provided in art 22 of the TRIPS Agreement 1995. The scope of the paper will focus on and be limited to geographical indication protection in Australia in comparison with the United States of America.

II International Conventions Relating to Geographical Indication

Before the TRIPS Agreement, several international conventions concerning the place of origin of a product had been settled. These former conventions introduced geographical indication protection in different terms and ways[5] and affected the way Australia protects geographical indication.

A Paris Convention for the Protection of Industrial Property 1883

The Paris Convention for the Protection of Industrial Property 1883 was an important multilateral convention for the protection of industrial property. It was signed on 20 March 1883 and revised six times before the most recent amendment on 28 September 1979.[6] This convention regulates all major industrial property rights subject matters; including a sign bearing the name of a product’s place of origin as an ‘indication of source’ or ‘appellation of origin’.[7] This convention does not take into account the possible different concepts by separating the indication of source and appellation of origins. Instead, it assures their protection by obliging seizure against the importation of goods directly or indirectly bearing a false indication, whether it is due to their source or producer’s identity.[8] The Paris Convention also regulates the collective mark in art 7bis[9] and the anti-unfair competition provision in art 10bis; where all producers in industrial or commercial competition are protected from dishonest practices,[10] and the public is protected from being misled.[11] Collective mark and anti-unfair competition provisions can be used as minimum bases of geographical indication protection.

B Madrid Agreement 1891 for the Repression of False or Deceptive Indications of Source on Goods

The Madrid Agreement 1891 for the Repression of False or Deceptive Indications of Source on Goods is another multilateral agreement that deals especially with a product’s place of origin. It has been revised four times, with the latest revision being on 31 October 1958. The objects are specified as being goods only and not services. This agreement obliges every contracting party to restrain in their nationals any trading activity relating to false or deceptive indication of source and to seize imports displaying deceptive indication of source; whether the deception occurs directly or indirectly.

C Lisbon Agreement for the Protection of Appellations of Origin and the International Registration 1958

The Lisbon Agreement for the Protection of Appellations of Origin and the International Registration 1958 is a ‘small member’ agreement.[12] However, it is known for providing strong protection for a product bearing the true name of its place of origin under its special concept of appellation of origin. Unlike the Madrid Agreement, the Lisbon Agreement does not restrict its objects as for goods only, but also to services. Art 2(1) of this agreement states that appellation of origin is:

The geographical name of a country, region, or locality, which serves to designate a product originating therein, the quality and characteristics of which are due exclusively or essentially to the geographical environment, including natural and human factors.

The strong protection is indicated by forbidding licensing, favouring appellation of origin more than an existing registered trade mark, and providing protection for an unlimited time periods as long as it is still effectively used. Furthermore, unlike a trade mark, once protected, an appellation of origin never becomes generic.

D Madrid Agreement 1891 and Madrid Protocol concerning the International Registration of Marks 1989

An international registration system for products bearing the true name of the place of origin is, in fact, specifically provided by the Lisbon Agreement 1958 only, which binds less than 20 member countries. Up to the present day, most states that provide protection for the true name of a product’s place of origin through another international agreement, especially under The TRIPS Agreement 1995, still disagree about whether or not a multilateral registration system is needed, and if so, how it could be established in an acceptable form.[13] In this context, some states prefer to provide protection as part of the trade name protection system; which uses an international registration system for trademark, under the Madrid Agreement Concerning the International Registration of Marks 1891, and the Protocol relating to the Madrid Agreement that was enacted in 1989 and came into force in April 1996. A state can choose to sign either one or both or of the treaties, because, basically, both treaties provide three similar types of international application and only differ in its flexibility. The protocol is more flexible and is preferred by many countries rather than the agreement.[14]

III Geographical Indication in the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement)

The TRIPS Agreement is a milestone in reducing international trade barriers for other than trade.[15] In TRIPS, geographical indication is regulated independently in s 3 art 22-24. According to art 22(1) of TRIPS, geographical indication is:

… indication which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristics of the goods is essentially attributable to its geographical origin.

Determining the protected elements of geographical indication is an important but a controversial issue.[16] Protected elements of geographical indication in TRIPS are only provided in the definition, very generally and mostly by implication. So, until now, member countries have tended to define and apply protectable elements through varied means of implementation.

1 TRIPS Prohibited Conduct regarding Geographical Indication

Prohibited conducts in respect with geographical indication are impliedly included by TRIPS in two levels. The first level is found in art 22 (2), (a), (b), which obliges member countries to prevent the use of any false geographical indication that have the potential to mislead the public[17] and to constitute unfair competition. The second level is found in art 23 (1), (2), (3), (4); called as additional protection for geographical indication, specialising in wines and spirits. For these two types of alcoholic beverages, protection should be afforded not only against false geographical indication, but also against any use of geographical indication to indicate other geographical origin; even when the true origin of the goods is indicated, used in translation, or accompanied by an expression such as ‘kind’, ‘type’, ‘style’, ‘imitation’ or the like. It means that especially for wines and spirits, protection is not only provided for consumers against misleading information, but also for producers, from harmful conduct on the path of competitors.[18]

2 Term of Protection of Geographical Indication in TRIPS

Unlike copyright, trade mark, industrial design or patent regimes, TRIPS does not specify a term of protection for geographical indication protection. This uncertainty seems to open the way for member countries to either place it on the list for future negotiation or to decide to enforce it nationally, based on their own national interests.

In this context, there are at least two kinds of the term of protection of geographical indication. Both are generally unlimited.[19] The first is the same as trade mark protection, which lasts for 10 years with the option of continuous renewals,[20] while the second is unlimited until terminated by the right holders.[21]

3 Ownership of Geographical Indication under TRIPS

Again, TRIPS does not specify the details of geographical indication ownership. However, the trend towards an increasing need to provide the protection of individual geographical indication for wines and spirits is accommodated in art 24 of TRIPS to be negotiated in the future.

4 TRIPS’ Member Country Obligations

In the context of geographical indication protection, member country obligations are provided in art 22(2) and 23(1) of TRIPS. The crucial problem here occurs in the method of requiring such obligation for member countries. Art 22(2) of TRIPS states that member countries shall provide ‘the legal means’ for interested parties to implement protection against false indication and unfair competition, while art 23(1) states that each member country shall also provide ‘the legal means’ for interested parties to establish stronger protection for wines and spirits. The meaning of ‘the legal means’ in both arts may be very broadly interpreted, covering the strictest through the most lenient ways of law implementation.[22] As there is no justified explanation or limiting this term, it implies allowing member countries to establish geographical indication law implementation systems based on their own choice.

5 Geographical Indication and Trade Mark Overlap

Geographical indication and trade mark protection sometimes overlap, especially in countries where both are treated as versions of trade names under the general system of trade mark law and practice.[23] As defined by TRIPS, both geographical indication and trade mark are independent topics,[24] resulting from different histories,[25] developed in different part of the modern world,[26] and have several unique elements that are clearly distinguished one from the other.[27] However, both have some elements that make them alike. They are similar in their objective in protecting public from being misled, in their main function of differentiating certain products from others, and in their reason for establishing the term of protection in a continuous manner.

In general, there are two views relating to the existence of geographical indication and trade mark. The overlap problem in this regard is the overlap in time. One view favours geographical indication more than trade mark. Consequently, an existing trade mark, regardless of whether it has been protected lawfully, is still actively in use, and has been registered in good faith, shall be phased out once a new geographical indication with similar or identical sign gains protection.[28] The other view, in contrast, holds trade mark and geographical indication as being equal, by using the ‘first in time first in right’ principle.[29] In this context, TRIPS takes a position by using ‘the first in time first in right’ principle; by providing in art 24(5)b that:

Where a Trade Mark has been applied for or registered in good faith, or where rights to a Trade Mark have been acquired through use in good faith … Before the Geographical indication is protected in its country of origin; measures adopted to implement this S shall not prejudice eligibility for or the validity of the registration of a Trade Mark, or the right to use a Trade Mark, on the basis that such a Trade Mark is identical with, or similar to, a Geographical Indication.

TRIPS does not explicitly mention that this position is only to be taken for the geographical indication for wines and spirits. It implies that this principle can be adopted for all geographical indication.

IV Geographical Indication Protection in Australia

From a narrow viewpoint, it may be said that Australia has not developed any geographical indication protection except for wine[30] and spirits, in which the protection of spirits is specified only for brandy which is, in fact, a spirit resulted from advanced distillation type of wine.[31] However, taking a broader view, providing protection by law does not always mean that the protection has to be explicitly mentioned in the act, regulation, or other written laws. Even in countries other than common law countries, geographical indication are sometimes not protected under specific laws, but under a general system of trade names protection from misleading and unfair competition conduct.[32] This is likely to be the case for Australia.

A Australian Wine and Brandy Corporation Act 1980

The Australian Wine and Brandy Corporation Act 1980 (AWBC Act 1980) is the legislation establishing the Australian Wine and Brandy Corporation. This corporation is a statutory marketing body which has a range of powers and functions concerning the Australian wine industry promotion and regulations at both national and international levels.[33] It has been amended several times. The most important amendments were due to the Bilateral Agreements between Australia and European Community signed in 1993 termed the Wine Agreement and the Bilateral Agreement between Australia and the United States of America regarding the Free Trade Agreement in 2004.

According to the AWBC Act 1980, the intentionally selling, exporting and importing wines with a ‘false’ or ‘misleading’ description and presentation are prohibited under ss 40C, 40D, 40E and 40F of the act. The legal meanings of ‘false description and presentation’ under s 40C are detailed in s40B, which covers all possible implications for geographical indication provided in the TRIPS Agreement, including additional protection in art 23 of TRIPS. ‘Misleading description and presentation’ are detailed in s 40D of the act, which covers intentional conduct that is likely to mislead the public. Geographical indication includes the name of a country, region or locality. The legal object of protection includes geographical indication, traditional expression[34] and ancillary protected expression.[35] Maximum penalty for unlawful use is for two years’ imprisonment.

B Australian Food Standards Code Spirit Standards

A special Australian regulation dealing with spirits is the Australian Food Standards Code Spirit Standards (P3) C12(g)(i). This code incorporates the notion of quality or reputation. It also involves any indication, either expressively or by implication. Therefore, it could be assumed that this code includes indirect geographical indication, which implicitly shows a special link to a specific region. Even though this code is not as comprehensive as the AWBC Act 1980, it allows spirits to enjoy additional protection as has been recognised in art 23 of the TRIPS Agreement.[36]

C Australian Trade Practices Act 1974 (Cth)

The Australian Trade Practicse Act 1974 (Cth) provides for a number of prohibitions on unfair competition in trade[37] that can be used to protect all types of geographical indication. Section 52 provides that a corporation shall not, in trade or commerce, engaging in conduct that is misleading or deceptive or is likely to mislead or deceive the public. Section 53 prohibits a number of extensive false or misleading representations in supplying or promoting goods or services, including making a false or misleading representation of a place of origin of a good. Section 55 prohibits a corporation from engaging in conduct that is liable to mislead the public. Fundamentally, these provisions constitute protection against misrepresentation and possible damage that implicitly protect geographical indication.

Misrepresentation and damage are two elements of the prohibited tort of passing-off in which a geographical indication would enjoy protection as marketing indicia.[38] The tort of passing-off is itself a well-established action in tort since the 1600s. It generally involves a classical trinity of elements: first, that the plaintiff has a trading reputation in some distinctive ‘indicia’ of trade, second, that the defendant is using the same or similar indicia in a kind of conduct that amounts to a form of misrepresentation by word or deed, and third, that the conduct is likely to cause either confusion or deception (or both) of potential customers of the plaintiff.[39] Thus the keywords are: reputation, misrepresentation and damage. The misrepresentation element itself is not necessarily a misappropriation conduct.[40]

With regard to the reputation element, a landmark case that was decided in 1961 related interestingly to a geographical name. The object of the dispute was the name of a luxurious white sparkling wine: ‘Champagne’ that came from the Champagne district in France.[41] ‘Champagne’ producers sued other wine producers who sold their product under the name ‘Spanish Champagne’ in the United Kingdom for passing off the original ‘Champagne’. The judge held that it was clear that a substantial portion of the public, who had not been taught about the nature and production of wines but acted as loyal consumers of such wine, were likely to be misled by the description of ‘Spanish Champagne’. There had been therefore a deliberate intention to attract ‘Champagne’ consumers to buy ‘Spanish Champagne’ by taking advantage of the reputation of ‘Champagne’. The court approved an injunction against the ‘Spanish Champagne’. This way of deciding a reputation element is now influencing Australian Law.[42]

At the Australian states and territories level, similar provisions can be found in the Fair Trading Act 1992 (ACT), the Fair Trading Act 1987 (NSW), the Fair Trading Act 1987 (SA), the Fair Trading Act 1989 (Qld), the Fair Trading Act 1985 (Vic), the Fair Trading Act 1987 (Tas), the Fair Trading Act 1987 (WA) and the Consumer Affairs and Fair Trading Act (NT), the Common Law states and territories’ provisions of the tort of passing off prohibitions, and their labelling legislations.[43]

In short, the Australian Trade Practice Act 1974 (Cth) does provide provisions relevant to geographical indication protection. However, it is important to note that the main function of such protection is only to prevent any possible harmful conduct performed by a third party. It does not constitute any exclusive right.

D Australian Trade Marks Act 1995 (Cth)

Section 6 of the Trade Marks Act 1995 (Cth) defines geographical indication as:

‘geographical indication’, in relation to goods originating in a particular country or in a region or locality of that country, means a sign recognised in that country as a sign indicating that the goods:



(a) originating in that country, region or locality; and

(b) have a quality, reputation or other characteristic attributable to their geographical origin.

By its nature, the name of a place of origin of a product cannot be protected under the trade mark regime because it is only descriptive.[44] However, the Trade Marks Act 1995 (Cth) opens the possibility of protecting a mark as long as it posses an inherent capability of being distinguished, which could involve indirect geographical indication,[45] or a capability of being distinguished through use which mostly involves geographical names.[46]

In respect of geographical indication, the Australian Trade Marks Act 1995 (Cth) defines several provisions. The first general provision is s 43 which provides that an application for a trade mark that is scandalous or contrary to the law is be rejected. Several offences are considered as forms of conduct that contrary to the law. In this context, an application for registration of geographical indication of wine that does not to the applicant’s knowledge originate in the area where the geographical indication is registered would be an offence.[47] Such an application should therefore be rejected. This offence, however, is only specialised for geographical indication of wine.

Section 6(1) of the Trade Marks Act 1995 sets out the grounds of opposition or rejection of a trademark application that involves a false geographical indication. As there is no explanation relating to what type of goods this art is aimed for, it is assumed to cover all types of geographical indication.

In line with the Australian Trade Practice Act 1974 (Cth) regarding the non-exclusivity of the rights granted, s 6(3) of the Trade Marks Act 1995 (Cth) provides the possibility for the later applicant to invalidate the opposition if it can be appropriately ascertained that even though a trade mark is a geographical indication of a particular good, it is also a geographical indication for the relevant goods applied. Otherwise, the applicant should prove that there is no intention to use the trademark in bad faith.

In summary, the Australian Trade Marks Act 1995 (Cth) does enable certain geographical indication to be protected as a form of trademark. However, as geographical indication is not a sign with a high level of capability to distinguish a product, it is suggested that the registrar should advise on any sign with a geographical origin to be registered as a trade mark in a manner of extension.[48]

E Australian Membership in International Agreements

Australia is a member of almost all international agreements related to Geographical indication. The only exceptions are the Madrid Agreement 1891 for International Registration of Marks and the Lisbon Agreement for the Protection of Appellations of Origin and their International Registration 1958. Regarding the Madrid Agreement, Australia considers that to be a member of the Madrid Protocol 1989, which provides more flexible ways of pursuing the international registration of mark is adequate. Not being a member of Lisbon Agreement 1958 also affects the position of Australia in protecting geographical indication that is closely related to trade mark.

F Several Important Bilateral Agreements Involving Australia

1 Australia and European Union 1994 Agreement (Wine Agreement)

Based on environmental and cultural factors, the most significant geographical indication products in Australia are wines. In all Australian states and territories, especially in the southeast quarter of Australian continent, there are a vast number of vineyards[49] and Australia is now positioned as the world’s fourth largest wine producer after Italy, French and Spain.[50]

The European Community represents the biggest market for Australian wines. However, as a migrant country, a large proportion of Australian wines have originated from Europe from where many Australian immigrants have come. The European names of these wines have also been adopted in Australia. In order to avoid unfair competition, Australia and the European Community signed a Bilateral Agreement on Trade in Wine and the Protocol which came into effect on 1 March 1994, popularly called the Wine Agreement. Based on the Agreement, European Community would decrease the technical barriers for Australian wines exports, and in return, Australia would gradually stop using European geographical indication and other geographical names that are listed in the agreement.[51] According to Art 2 Annex II of the Agreement, the scope of geographical indication includes the appellation of origins.

In Australia, this bilateral agreement underwent several harmonisations due to the implementation of TRIPS in 1995. In the ninth harmonisation, it was decided that a geographical indication of wines that had been part of an Australian registered trademark did not provide the proprietor with the right to the exclusive use of the geographical indication. The inclusion of several protected geographical indication mentioned in annex II of the agreement that had been part of the trade mark registrations would be limited only regarding wines originating in a specific region or locality in the territory of Australia and the European Community.[52] This provision re-emphasises the legal view of Australia and European Community that the nature of geographical indication ownership is not exclusive.[53]

2 Australia-USA Free Trade Agreement (FTA) 2004

The Australia-USA Free Trade Agreement is a bilateral trade agreement between Australia and the USA. It covers a wide range of topics, from duties on imported and exported goods to Intellectual Property Rights, and the chapter on Intellectual Property Rights is one of the largest and most detailed chapter. The Intellectual Property Right chapter covers copyright and related rights, trade mark, domain names, industrial design, patents, regulated products, and intellectual property enforcement. Geographical indication is incorporated in the trade mark topic.[54]

One of the direct results of this bilateral agreement is the amendment of the Australian Wine and Brandy Corporation Act 1980. This amendment is related to special procedures through which a trade mark owner may object to the determination of an Australian geographical indication on the basis of pre-existing trade mark rights, and procedures for the cancellation of such Australian geographical indication. In addition, a new sub-division has been integrated regarding the procedures through which a trade mark owner may object to a geographical indication, and a mechanism in the determination process for the Trade Marks Registrar to consider the rights of trade mark owners and advise the Geographical Indication Committee.[55]

V Geographical Indication in the United States of America

The United States of America (the US) is a leading state that refuses to protect geographical indication as a special independent law or act.[56] Instead, in respect of geographical indication, the US has established a legal framework for the protection of geographical indications, similar to that in Australia.

A Geographical Indication Protection in the United States Trade Mark Act 1946

In a similar way to Australia, geographical indication in the United States of America is a sign used in the course of trade and has developed its distinctiveness through reputation.[57]

Under the US Intellectual Property Rights system, geographical indication is involved in the certification marks protection system. In line with the US Trade Mark Act 1946, The Unites States Patent and Trademarks Office constitutes that:

a Certification Mark is defined as any word, name, symbol device, or any combination, used or intended for use in commerce with the owner permission by someone other than its owner, to certify regional or other geographical origin, material, mode of manufacture, quality, accuracy, or other characteristics of someone’s goods or services …[58]

In the US certification mark system, geographical indication is compounded with other unregistered marks that do not identify the origin of a good or service but are eligible to be certified. As a particular type of trade mark, the certification mark does not identify a source of goods but indicates their quality or conforms to its particular standards.[59] Specifically for geographical indication, the US certification mark certifies all aspects of the nature of origin of the goods or services to which it has been applied.[60] Similar to trade marks, the term of protection is 10 years, with unlimited renewal allowed as long as the mark is still used in the market.

The range of certification marks of ownership within the US protection system is wide, because it enables individuals, clubs, private or public to be owners. In this context, certification marks are often held by commodity organizations. The US department of agriculture owns several certification marks as multi-product marks as well.

The important point to note is that in the US system, individuals as well as groups of people can be owners of a geographical indication. The US geographical indication ownership is therefore not a typical collective or communal ownership as is commonly known in many countries, especially in the European Community.

The collective mark in the US can also be used to protect geographical indication of which most of the ownership is collective. The collective mark is a particular type of trademark that does not identify the source of a good but indicates membership in a particular organization.[61] The organization can be a cooperative, an association, or other collective group or organization[62] but must consist of more than one person.

B The United States Code in Respect to Geographical Indication

The United States Trade Mark Act 1946, as with the other United States Public Laws at Federal level, is implemented based on its operative provisions in the United States Code (USC). As the US Trade Mark Act 1946 regards geographical indication as part of certification mark, title 5 USC s 1127 defines a Certification Mark as:

any word, name, symbol, or device, or any combination thereof … used by a person other than its owner … to certify regional or other origin, material, mode of manufacture, quality, accuracy, or other characteristic of such person’s goods or services or that the work or labour on the goods or services was performed by members of a union or other organization.

Title 15 USC s 1052(a) clearly prohibits registration of marks that consist of or comprise, among other things:

a geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods and is first used on or in connection with wines and spirits by the applicant.[63]

As with other general trade mark laws, including the Australian Trade Marks Act 1995 (Cth), title 15 USC s 1052(e)(2) prohibits the registration of marks which, when used on or in connection with the goods of an applicant, are ‘primarily geographically descriptive’ of them. This is a clear statement that a descriptive term, including a geographical term, cannot be registered as a trade mark. However, this specifically excludes ‘indications of regional origin’.[64]

An indication of regional origin or geographical indication is registrable under title 15 USC s 1054 as collective and certification marks.[65] In addition, where an applicant can demonstrate that a geographic term has become associated with its goods (or services) and thus has acquired distinctiveness with regard to those goods or services, registration is permitted under title 15 USC s 1052(f).

The typical prohibition of registration is only constituted in title – 15 USC s 1052 (e)(3) prohibits registration marks which, when used on or in connection with the goods of the applicant, are ‘primarily geographically deceptively misdescriptive of them’. Additionally, another limitation is implied by the use of the term ‘indication of regional origin’ which could be interpreted as only involving a region smaller than a territory.

The US certification mark can provide legal protection for geographical indication quite as strong as that for the specialised ones in the European Community, because the US certification mark protection also requires a linkage between the products and the products’ place of origin. This linkage should be part of all grounds for certification. Once the linkage has been established and the certification has been granted, the certification marks could protect one or more products, including one or more producers in the given regions.[66] This type of certification mark is known as a multi-products mark.

Some examples of geographical indication that are protected under the US certification marks vary among national and overseas products. In the case of US national products, there are Idaho certification mark for potatoes and onions; Real California Cheese and Design for cheese; Napa Valley Reserve and Design for wines and sparkling wines; Pride of New York and Design for agricultural products that are produced or processed in New York; and Ohio River Valley for a recognised viticulture area. In the case of overseas products, there are Parma Ham from Italy under US Registration No. 2.014.628, Stilton Cheese from the United Kingdom under US Registration No 1.959.589, and Roquefort Cheese from France under US Registration No 571.798.[67]

C The United States Regulations of the Bureau of Alcohol, Tobacco and Firearms (ATF)

Although wine is not a major product in the US national and international trades, the US Regulations have been promulgated by the Bureau of Alcohol, Tobacco, and Firearms (ATF). These regulations prohibit the labelling and advertising wines in ways that can mislead the public.

In line with the homonymous[68] geographical indication of wines regulated in TRIPS, these regulations also prohibit the misleading use of ‘sound-alike’ geographical indication for wines, and use of a coined word or name that simulates or imitates a geographical indication if it creates a false impression. In respect to homograph geographical indication, the wine’s advertising, statements, designs, devices or representations that tend to create the impression that the wine originated in a particular place or region are prohibited, unless the label of the advertised product bears an appellation of origin, and such appellation of origin appears in the advertisement in direct conjunction with the class and type designation.

This occurs differently in the case of homophone geographical indication. Even though similarity in sound is commonly used as a consideration in deciding whether there is a likelihood of confusion between marks, making a decision based on a prediction of how the public pronounces a particular mark is weak. Therefore, one way of pronouncing a mark cannot be relied upon to avoid a likelihood of confusion. In the case of an unclear of pronunciation of a mark, the US Patent and Trademark Office should demonstrate whether the mark contains a phonetic equivalent of a geographical indication or not. If the mark is equivalent, it will be treated as if the geographical indication were correctly spelled.

D The United States Common Law Protection System

The US legal system can protect a geographical indication even though it has not been registered or granted certification at all, as long as it possesses a distinct reputation that can be proven in court. This system reduces the cost of formality. An example is the protection for Cognac Brandy from France based on the decision in the Institute National Des Appellations v Brown-Forman Corp, 47 USPQ2d 1875 (TTAB 1998) case.

E The United States Trade Mark Counterfeiting Act 1984

The US Trade Mark Counterfeiting Act deals with geographical indication in law enforcement matters. Based on the Criminal S of the Trademark Counterfeiting Act 1984, the counterfeiter can be fined up to $ 2,000,000 and/or imprisoned for up to 10 years. If the counterfeiter is a juristic person or recidivist, the fine and imprisonment is higher.

VI Discussion

1 Comparison between Australia and the United States

In general, both Australia and the United States of America protect geographical indication under the general trade mark law and practice system, especially under the common-law certification marks.

The benefit of protecting all types of geographical indication under certification marks are:

• the certification mark is successfully used to identify the origin of an individual agricultural product;

• as a form of protectable unregistered mark, the certification mark system enables an unregistered geographical indication or indication of source to be protected, as long as it has a distinct reputation that can be proven in court. This system reduces the cost of formality;[69]

• by protecting geographical indication under certification marks, the objects of protection can be broader, not only for goods, but services as well.

2 Scope of Protection provided by Australian and the United States of American Laws

The context of the Australian and the US position regarding all types of geographical indication can be seen in the graphic below which illustrates the overlapping scope of indication of sources, appellation of origins and geographical indication. In most cases, certification marks could cover all of the objects below:

100.png

3 Comparison between Australia and the United States of America

The essential points of comparison between Australia and the United States of America in providing protection for all geographical indication is provided in the following table:

Australia
United States of America
Certification mark and collective mark
Special legal clause:
- inherent capability to distinguish
Protects all types of geographical indication, including wines and spirits
Non-exclusive right for proprietor
Damages, no criminal penalty
Covers goods and services
Term of protection 10 years renewable
Against:
- misleading conduct
- misrepresentation
- passing off
Sui generis law under the Australian Wine and Brandy Corporation Act 1980 + Special Provisions in the Australian Food Standards Code for Spirits
No provision regarding homonymous
geographical indication
No explicit position regarding the pre-existing trade marks, except for accessing TRIPS provision
Certification mark, collective mark and individual mark
Special legal clauses:
- indications of regional origin is excluded from ‘primarily’geographically descriptive” term
- has a distinctive reputation
Protects all types of geographical indication, including wines and spirits
Exclusive right of ownership
Damages, possible criminal penalty
Covers goods and services
Term of protection 10 years renewable
Against:
- misleading conduct
- misrepresentation
- passing off
No sui generis law, but several provisions in the US Regulation promulgated by the Bureau of Alcohol, Tobacco and Firearms in labelling and advertising wines
Providing provisions regarding homonymous geographical indication:
- acknowledging homograph
- refusing homophone
Explicit position in standing against favouring geographical indication more than trade mark

POST AUSTRALIA–UNITED STATES FREE TRADE AGREEMENT
Australia
United States of America
Explicitly acknowledges that geographical indication will be able to be protected under trade marks law system
Explicitly stands for ‘first in time first in use’ principle
Amends the Australian Wines and Brandy Corporation Act 1980 regarding the procedures and relation between Trade Marks Registrar and Geographical Indication Committee for wines and brandy
Geographical indication is already protected under the trade marks law and practice system
Explicitly stands for ‘first in time first in use’ principle

VII Conclusion

Australia and the United States of America do respect geographical indication for products other than wines and spirits. As does the United States of America, Australia protects geographical indication for other than wines and spirits under the general system of trade mark and practice provisions, with special clauses. In this context, Australia has been providing protection not only for geographical indication for wines and spirits, but also for other products. Moreover, under the certification marks system, Australia can also provide protection for services. Thus, Australia meets the TRIPS minimum standard protection requirements, and goes beyond the minimum in certain respects.


[∗] SH/LLB (Padjadjaran University – Indonesia), LLM (University of Technology Sydney), Law Lecturer in the Law Faculty, Padjadjaran University, Bandung, West Java, Indonesia, and PhD Candidate in the Faculty of Law, University of Technology Sydney (Aus AID 2004-07).

[**] I would like to thank Professor Peter Gillies and the Intellectual Property Right referee of the MqJBL, Principal Supervisor Professor Philip Griffith, Dr Rocque Reynolds, Mr. Bill Childs and also Mr Ross Forman and Ms Pat Skinner.

[1] In the context of geographical indication, the United States of America and European Community (European Union) have existed as two global poles in respect of Geographical indication protection since TRIPS Agreement was still in the form of a bill. Their views differed with regard to the best way to implement such protection. Although the US was quite satisfied with the general principle of Geographical indication protection in TRIPS, the EC proposed stronger protection for wines and spirits and promoted such protection to be applied to other goods too, including services. See Terence P Stewart (ed), The GATT, Uruguay Round. A Negotiating History (1986-1992), Volume I Commentary (1993) 110; see also, Albert Conrad, ‘The Protection of Geographical indication in the TRIPS Agreement’ (1006) 86 Trade Mark Review 29; see also, ‘WTO Members Divided over Geographical Indication’ (3 July 2002) 5 ICSTD Bridges Weekly Trade News Digest [25] <http://www.icstd.org> 1 August 2004.

[2] World Trade Organization, ‘The WTO was born out of negotiations; everything the WTO does is the result of negotiations’ <http://www.wto.org> 8 August 2004.

[3] Cornish and Llewelyn, Intellectual Property: Patents, Copyrights, Trade Marks and Allied Rights (2003) 12-13.

[4] Geographical indication cases in Australia are related to wines. See eg, Comite Interprofessionnel des Vins Cotes de Provence & Anot v Stuart Alexander Bryce & Anor (1996) 742 FCA 1, Bureau Interprofessionnel Des Vins De Bourgogne v Red Earth Nominees Pty Ltd (2002) FCA 588; see also, Beringer Blass Wine Estates Limited v Geographical indication Committee (2002) FCAFC 295.

[5] Kevin M Murphy, ‘Conflict, Confusion and Bias Under TRIPS Arts 22-24’ (2004) 19 American University International Law Review 1811.

[6] The substantive provisions under art 1-12 came into force in 1970. The other dates are 26 April 1970 for countries that recognise the German accession and 19 May 1970 for other countries not recognising such accession.

[7] See, Paris Convention for the Protection of Industrial Property 1883 s 1, s 7, s 10, s 10bis and s 10ter.

[8] Paris Convention for the Protection of Industrial Property 1883 s 9 and s 10.

[9] In this context, the Paris Convention determines that a collective mark application made by an association should be accepted as long as it is not contrary to the law of the country of origin.

[10] Paris Convention for the Protection of Industrial Property 1883 s 10bis(2) defines that any act of competition contrary to honest practices in industrial or commercial matters constitutes an act of unfair competition.

[11] Paris Convention for the Protection of Industrial Property 1883 s 10bis(3)3 states that several actions shall be prohibited, including all acts of such nature as to create confusion in a competitor and indications or allegations; the use of which in the course of trade is liable to mislead the public as to the nature, the manufacturing process, the characteristics, the suitability for their purpose, or the quantity of the goods.

[12] So far, the Lisbon Agreement only consists of 19 member countries.

[13] For the gist of the debate since the Doha Development Agenda was launched, see International Food and Agricultural Trade Policy Council, ‘Geographical indication’ (2003) [1-9] <http://www.agritrade.org> 3 September 2004.

[14] The office of origin is the national trademark office in the chosen country. See Jill McKeough, Andrew Stewart and Philip Griffith, Intellectual Property in Australia (3rd ed, 2004) 600-604. Australia prefers to be a signatory of the Protocol only.

[15] Philip Griffith ‘International Intellectual Property Rights Convention’ (source material Volume II Part 1 IASTP II Short Course in IPR, Law Faculty, University of Technology Sydney, 2002).

[16] Stacy D Goldberg, ‘Who Will Raise the Flag? The Battle between the United States and the European Union over the Protection of Geographical Indication’ (2001) 22:1 University of Pennsylvania Journal of International Economic Law 108-109.

[17] In complete text: to prevent ‘the use of any means in the designation or presentation of a good that indications or suggests that the good in question originates in a geographical area other than the true place of origin in a manner which misleads the public as to the geographical origin of the good’.

[18] See landmark cases on wines, eg, J Bollinger and Others v Costa Brava Wine Co Ltd (No 2) [1961] 1 All ER 561; see also, The John Walker and Sons Ltd and Others v Henry Ost and Co Ltd and Another [1965 J No 4785] 1 WLR May 29, 1970; landmark case involved non alcoholic beverage drink, see eg, The Taittinger and others v Allberv Ltd and others [1994] All ER.

[19] Geographical indication is similar to Trademarks. The continuous term of protection that is only limited by the inactive using of a sign is favourable for the public in guaranteeing certainty about the distinctive quality and the true information.

[20] Some countries integrate Geographical indication into general Trade Mark and Practice protection, while some others regulate it separately, but in the same notion of the terms of protection with Trade Marks.

[21] Stephane Passeri, ‘Geographical indication (GIs)’ (paper presented at Workshop: Geographical indication in Indonesia, Jakarta, DGIPR – French Embassy – CIRAD, 24−25 February 2004).

[22] Dwijen Rangnekar, ‘Geographical indication, A Review of Proposals at the TRIPS Council: Extending Art 23 to Products other than Wines and Spirits’ (UNCTAD-ICTSD Project on IPRs and Sustainable Development, June 2003) 18.

[23] Stephen Stern, ‘The Overlap Between Geographical indication and Trade Marks in Australia’ [2001] MelbJlIntLaw 10; (2001) 2 Melbourne Journal of International Law 224.

[24] Annex 1C of The Agreement Establishing World Trade Organization Part II.

[25] Daniel Gervais, The TRIPS Agreement, Drafting History and Analysis (2nd ed, 2003).

[26] European Communities, The United States of America, Australia, Latin America, India, and now in several countries in South East Asia and Africa.

[27] Alberto Fransisco Ribeiro de Almeida, ‘Geographical Terms in Trade Marks’ (paper presented at AIDV Conference on the Conflict between Geographical indication and Trade Marks for Wines and Spirits, Reims, 18-19 March 2004) 1-4.

[28] See the deep analysis of French Law in Denis Rochard, La Protection Internationale des Indications Géographiques (1er prix, 2002) which has been criticised by the International Trade Marks Association as an excessive Geographical Indication; see, Frank Z Hellwig Anheuser-Bush, ‘The Prior Trademark Right Takes Precedence over the Later GI’ <http://www.inta.org> 28 August 2004.

[29] Stephen Stern, ‘The Conflict between Geographical Indication and Trade Marks in Australia once again heads off down the Garden Path’ (paper for Corrs, Chambers, Westgarth, 11 September 2004).

[30] Regarding Australian Food Standard 4.5.1 concerning Wine Production Requirements, wine means the product of the complete or partial fermentation of fresh grapes, or a mixture of that product and products derived from grapes.

[31] Regarding Australian Food Standard, ibid, brandy means the spirit obtained by the distillation of wine in such a manner as to ensure that the spirit possesses the taste, aroma and other characteristics generally attributed to brandy, in accordance with the requirements set out in the Schedule to this Standard.

[32] A typical example is the protection provided by the United States of American Law.

[33] ‘The Australian Wine and Brandy Corporation Act 1980, Part 32B Examination of Trade Marks for Wine (Class 33) <http://www.ipaustralia.gov.au> 11 November 2004.

[34] Traditional Expression is the other name for Protected Traditional Denomination which protects the traditional way of expressing a product, most of which are agricultural-based products.

[35] Ancillary Protected Expression refers to the secondary expression which is protectable.

[36] World Trade Organization, Council for TRIPS, ‘Review Under Art 14.1 of the Application of the Provisions of the S of the TRIPS Agreement on Geographical Indication, Responses from Australia’ (IP/C/W/117/Add19, 9 July1999).

[37] Philip Griffith, ‘Acts of Unfair Competition Under the Paris Convention’ (paper presented at IPR Specific Course IASTP II-Law Faculty, University of Technology Sydney, 2002) 1-5.

[38] Philip Griffith, ‘Geographical Indication of Origin’ (paper presented at IPR Specific Course IASTP Phase II April-July 2002).

[39] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 159; 106 ALR 465; see also, Rocque Reynolds Intellectual Property, Text and Essential Cases (2nd ed, 2005) 603; see also ibid.

[40] Campomar Sociedad Limitada v Nike International Ltd [2000] HCA 12 (9 March 2000); see also various Geographical Indication landmark cases that always involve passing-off, eg, Erven Warnink BV v J Towenend and Sons (Hull) Ltd [1979] 2 All ER 927, [1979] AC 731, (Advocaat Case); see also landmark cases on wines, above n 18.

[41] J Bollinger v Costa Brava Wine Co (No 2) [1961] 1 WLR 277; see also, ‘Bollinger decision’ in Lionel Bently and B Sherman, Intellectual Property Law (2001) 724-725.

[42] The Australian Trade Mark Act 1995 s 120(4) provides that a Trade Mark is ‘well-known’, or having a distinctive reputation in Australia, if it is in accordance with the knowledge of the relevant sector of the public, for example, as a result of the promotion.

[43] World Trade Organization, Council for TRIPS, ‘Review under Art 24.2 of the application of the provisions of the S of the TRIPS Agreement on GIs’ (Response from Australia IP/C/W/117/Add.19, 9 July 1999).

[44] Australian Trade Marks Act 1995 (Cth) s 41 n 1 details a number of trademark types that have a low capacity to differentiate. One of the types is a trademark that apparently consists of a sign that is commonly used to indicate a kind, quality, intended purpose, value, geographical origin or other characteristic of goods or services, for example, green shoes, famous drink, or lowest store.

[45] Australian Trade Marks Act 1995 s 41 (3) constitutes that ‘ … in deciding the question whether or not a trademark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trademark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons’.

[46] Australian Trade Marks Act 1995 s 41 (4) (a) (ii) constitutes that ‘ … if the Registrar is still unable to decide the question … the registrar is to consider whether, because of the combined effect of the following: … the use, or intended use, of the trade mark by the applicant … the trade mark does or will distinguish the designated goods or services as being those of the applicant: …’. See also eg, Allergan Inc Re [1996] ATMO 62 (5 December [1996] ATMO 62; 1996); 37 IPR 639; 91-297.

[47] Southcorp Wines Pty Ltd [2000] ATMO 34 (14 April 2000).

[48] Chocosuisse Union des Fabricants Suisses de Chocolat and Ors v Cadbury Ltd (1998) 41 IPR 1 (HC) [Chocosuisse]; (1999) PC 826 (CA) [Chocosuisse (CA)].

[49] Australian Department of Foreign Affairs, ‘The Australian Wine Industry’ (2002) 2 <http://www.dfat.gov.au> 24 October 2004.

[50] <http://www.foodandwine.net/wine/wine0180.htm> 24 October 2004.

[51] Ibid.

[52] Ibid.

[53] In the context of ownership, it is likely that Australia is closer (but not the same) to the European Community style.

[54] US Free Trade Agreement c17 s 17(2).

[55] ‘How the Australia-USA Free Trade Agreement change Intellectual Property Rights’ (2005) Australian Industrial and Intellectual Property News 237 <http://www.cch.com.au> 30 May 2005.

[56] Stacy D Goldberg, ‘Who Will Raise the Flag? The Battle between the United States and the European Union over the Protection of Geographical Indication’ (2001) 22:1 University of Pennsylvania Journal of International Economic Law (2001) 108-109.

[57] In the case of countries that view Geographical Indication as part of Trademarks, ‘Geographical Indication cannot be treated by an “intent to use” or by the mere lodgement of an application with a registration system … It shall have got distinctiveness from extensive usage by the producer’ that implies that a reputation has existed, see, Stephen Stern, ‘Geographical Indication and Trade Marks: Conflicts and Possible Resolutions’ (paper presented at Worldwide Symposium on Geographical Indication, World Intellectual Property Organization and the United States Patent and Trademark Office, San Francisco, California, 9-11 July 2003) 3.

[58] UPSTO 2003.

[59] Michael I Samson, Intellectual Property Glossary of Institute of e-Commerce Carnegie Mellon University (1999-2002).

[60] International Trademark Association’s Information Centre, ‘Certification Marks’, <http://www.inta.org> 24 October 2004.

[61] Samson, above n 59.

[62] 15 USC 1127.

[63] This prohibition should come into force one year after the date on which the WTO Agreement enters into force in the United States of America.

[64] 15 USC 1052(e)(2) states that, ‘No Trade Mark by which the goods of the applicant may be distinguished from goods of others shall be refused registration on the principal register on account of its nature unless it … (e) consists of a mark (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of regional origin is primarily geographically descriptive of them, except as Indications of regional origin may be registrable under s 4 …’

[65] 15 USC 1054 constitutes that collective and certification marks, including Indications of regional origin, are registrable.

[66] Bruce A Babcock and Roxanne Clemens, ‘Geographical Indication and Property Rights : Protecting Value-Added Agricultural Products’ (MATRIC Briefing Paper, 04-MBP 7 May 2004).

[67] USA – APEC – Mexico Representation, ‘Snapshot of GI’s in APEC Economies’ (XVII Intellectual Property Experts’ Group Meeting, Vancouver, Canada, 8-9 July 2003, 2003/IPEG/008).

[68] Homonym Geographical Indication can consist of a homograph or similarity in writing and a homophone or similarity in pronunciation.

[69] USA – APEC – Mexico Representation, above n 67.