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Opportunities to protect geographical terms vary widely around the world. While there is a reasonably strong and well-established sui generis system in the EU, other countries rely on collective or certification marks. Whatever protection is available, there are further questions about its duration, cost and availability (in particular, whether it is equally open to national and foreign owners). Further questions arise over the relationship between GIs and other rights, such as trade marks and domain names, and which takes precedence in the event of a clash. Managing IP correspondents consider these questions, as well as details of how to challenge GIs and what recent cases reveal.

Questions

1. Registration: Can geographical indications (or other rights on geographical names such as collective/ certification marks) be protected in your jurisdiction? If so, which types of product are eligible for protection and which are specifically excluded? What are the criteria for protection? How does one obtain protection for GIs (or other similar rights)? How long does protection last? Must any fees be paid? 2. Foreign rights: Are there any special requirements for protecting foreign GIs in your jurisdiction in comparison with national GIs? 3. Scope of protection: Can a GI (or similar right) be used to block a trade mark application/registration and/or a domain name? What is the extent of protection – is there a need to show confusion? Are there any non-GI specific laws, such as unfair competition laws, that can be used to prevent the use of a geographical indication? 4. Challenge: Is it possible to challenge and/or cancel a GI (or similar right) and if so how do you do that? Can a GI become generic? 5. Recent cases: Are there any recent cases that illustrate what strategies GI owners and/or brand owners should adopt?

Argentina

GLOBAL PRACTICE

There are two pieces of legislation in Argentina that regulate the protection of geographical indications (GIs): Law 25163 of 1999, which deals with wines and wine-based alcoholic beverages (spirits), and Law 25380 – modified by Law 25966, published 2004 – which covers agricultural and food products excluding wines and spirits. No other products outside the scope of this protection are eligible. Although there were rules contained in earlier laws and regulations that led to the recognition of appellations of origin in Argentina, such as the local Food Code, the Fair Trade Act and the provisions of international treaties, with the passing of laws 25163 and 25380 Argentina has complied with the minimum standards of protection for this type of rights provided by the TRIPs Agreement.

Law 25163 allows for the protection of three kinds of GIs: a) indications of source (IS) that apply to wines with 80% of grapes originating from a specific area; b) GIs used in respect of quality wines and spirits made with all grapes from a specific area, whose characteristics are essentially due to their geographical environment, and c) appellations of origin (AO), which guarantee that the qualities and characteristics of the product are essentially due to the geographical environment of origin including natural and human factors.

Under the law, GIs are registered at the National Institute of Viticulture (INV) – the body in charge of applying the law – and at any individual or legal entity registered with the INV and involved in the manufacturing of wines.

The national government through the INV grants the right to use an IS, GI or AO, provided that the legal conditions are met in respect of wines and spirits as defined by Law 14878 (Law on Wines).

The following cannot be registered as a IS, GI or AO: 1) names that have become a common (or generic) term for the product in the country of origin, 2) the varietal name of the grape, and 3) the registered trade marks covering viticulture products unless their owner has authorised its registration as such.

Law 25380 distinguishes between two categories of names: a) GIs, which identify a product whose quality or characteristics are due to the geographical origin, and b) AOs as defined by Law 25163.

The following cannot be registered as GIs or AOs: 1) a name which has become a common (or generic) term of the product in Argentina, 2) a term that has already been registered or used in good faith as a trade mark before January 1, 2000 or before the registration of the GI and/or AO in the country of origin, 3) terms confusingly similar to names already registered as GIs or AOs for agricultural and food products, and 4) names which are liable to mislead consumers as to the origin, properties or characteristics of the agricultural and food products.

Under to this law, GIs must be registered at the Secretariat of Agriculture, Breeding and Fishing.

Laws 25163 and 25380 establish the procedure, requirements and information needed to obtain the recognition and registration of a GI, and provide that any individual or legal entity with a legitimate interest will be able to oppose the application. Registrations made before the INV must pay a fee whilst registrations made before the Secretariat of Agriculture are free.

These laws also state that the right to use an IS, GI or AO may be temporarily suspended or definitively cancelled for failure to comply with the legal provisions. The bodies in charge of applying the laws may impose penalties to unregistered parties using an IS, GI or AO without the owner's authorisation. The registrations and rights to use them will be in force as long as the name is in use and provided the conditions of authorisation are maintained.

While there are numerous GIs registered by the INV, many of which were acknowledged ex-officio, such as Lujan De Cuyo, Valle De Uco and Patagonia Argentina, there are only two AOs registered in the agricultural and food fields, namely Chivito Criollo Del Norte Neuquino and Salame De Tandil.

According to the GI laws and their regulations, foreign GIs protected in their country of origin can also be protected in Argentina.

To date no foreign GIs have been registered although as far as agricultural and food products are concerned, there are three pending applications for the registration of the GIs Turron De Jijona, Turron De Alicante and Queso Parmigiano-Reggiano.

A trade mark application may be blocked by a GI based on the provisions of Article 3(c) of Trademark Law 22362, which prohibits the registration of national or foreign AOs as trade marks.

According to the GI laws, when examining class 33 trade mark applications including a geographical name, the Trademark Office (INPI) must refer the matter to the INV to confirm if the name has been registered as a GI, in which case the application must be rejected. The INV's decisions are binding on the INPI. At the same time, INV will not grant a IS, GI or AO similar or identical to a prior registered trade mark in class 33 unless its owner has authorised its registration as such.

In addition, the INPI will require from the Secretariat of Agriculture information in relation to trade mark applications containing geographical names applied for in international classes 29, 30, 31 and 32 as well as in any other relevant class. A registration or application for a GI or AO notified to the INPI cannot be registered as a trade mark.

In turn, before registering a GI or AO the Secretariat of Agriculture will require information from INPI as to whether the name is registered as a trade mark particularly in international classes 29, 30, 31 and 32. If so, the Secretariat will analyse the trade mark in relation with the prohibitions of Law 22362 and will give its recommendations to the applicant of the respective GI or AO.

There are no prior cases of trade mark registrations or registered domain names that have been challenged ex officio on the basis of a GI. Nevertheless, we believe that either the INPI or the Secretariat of Agriculture would have a legal basis to do so.

According to the rules established by Nic Argentina (the entity responsible for domain name registrations in Argentina) registration of domain names may be rejected if they violate third parties' rights.

The INV and the Secretariat of Agriculture can ex officio or by request of third parties with a legitimate interest revoke the right to use a GI granted to any party if such party fails to comply with the legal requirements.

Although the law defines when a name is considered generic and prohibits the registration of generic names as an IG/IS/AO, so far there has been no case-law in this regard.

In re Peters Hnos Cia Com e Ind c/Institut National des Appellations D'Origin issued on August 12 2010, Division I of the Federal Court of Appeals for Civil and Commercial Matters admitted the opposition filed by the defendant against a trade mark application that included a foreign AO (Martinique).

Another precedent pending in the Supreme Court deals with the homonymy between a foreign AO and an Argentine GI. The Regulatory Council of the Qualified Appellation of Origin Rioja from Spain initiated court action against INV to contest Resolution C 32/2002 issued by INV on November 14 2002 which acknowledges La Rioja Argentina as a GI, alleging confusion between their AO Rioja (from Spain) and the GI La Rioja Argentina. On February 24 2011 the Federal Court of First Instance for Administrative and Contentious Matters dismissed the plaintiff's claim on the grounds that there was no likelihood of confusion between them. The decision was affirmed by the Court of Appeals but is not final as the plaintiff filed an appeal before the Supreme Court. It now remains for the Supreme Court to decide which will be the precedent to consider in homonymy cases.

In Ovinto v INPI, a case pending before the Federal Court of First Instance in Civil and Commercial Matters, the plaintiff appealed a resolution of the Trademark Office that had rejected the registration of a new logo of the trade mark Tunuyan which had been registered as a trade mark before the subsequent recognition of the name as a GI. The case demonstrates the lack of harmonisation between the trade mark law and law 25163 since the INV registered Tunuyan as a GI whilst Tunuyan was registered as a trade mark.

Carol O'Donnell and Iris Quadrio Marval O'Farrell & Mairal Buenos Aires

Australia

In Australia, geographical indications can be protected in two ways:

• In respect of goods of any kind, registration under the Trade Marks Act 1995 as certification marks or collective trade marks; or,

• In the case only of wine, registration under a system administered by a government agency, Wine Australia, under the Wine Australia Corporation Act 1980 (WACA).

Certification marks indicate some aspect or characteristic of product quality and must be licensed to anyone whose product complies with publicly available criteria dictated by the trade mark owner and approved by the Australian competition regulator, the Australian Competition and Consumer Commission (ACCC), such as origin or quality.

Collective marks are owned by associations and merely guarantee the goods originate with any member of that association.

GIs registered under the WACA are published in the Register of Protected GIs and Other Terms.

Under the Trade Marks Act 1995, an application is made to IP Australia for registration of a certification mark. Under that application, the criteria or rules, not only for the quality or origin of goods but also the procedures for reviewing applications for grant of licences, the terms of licences granted, rules for refusal of applications and termination of licences and for review of those decisions, are referred to the ACCC for approval, to assure that there are no anti-competitive consequences of such rules. There are no such constraints on applications for collective marks other than compliance with the requirements of the Trade Marks Act 1995 for the existence of an association and its members having a common interest in certain goods or services.

In the case of wine, an application for wine of a certain type or origin to be recorded in the Register of Protected GIs and Other Terms must be made to Wine Australia which then makes a determination.

A number of GIs from countries outside Australia are registered under Australia's certification and collective trade mark system and under the WACA. Such registrations include those by international producers and Australian importers.

For example, in Australia, GIs for the cheeses Stilton and Parmigiano Reggiano are registered as certification trade marks, whereas Grana Padano is registered both as a certification and as a collective mark.

Examples of registered GIs under the WACA include Australian GIs such as Barossa Valley and Hunter and overseas GIs include Champagne and Chinon.

Certification and collective trade marks are protected in the same way as any other trade marks, with some special rules concerning the claiming of damages for infringement in the case of collective marks, and are subject to renewal every 10 years in the same way as regular trade marks.

Under the WACA, protection is indefinite subject to a decision of Wine Australia to cancel the registration, as mentioned below. However, there is no right of action by anyone in the nature of a civil trade mark infringement proceeding. There are only provisions for criminal offences if a person wrongly uses a wine GI registered under the WACA.

Registration as a trade mark or, in the case of wine under the WACA, will also allow the owner to lodge a notice of objection with the Australia Customs and Border Protection Service for seizure of goods that potentially infringe a registered GI.

In addition, the common law tort of passing off may also be available, as well as the general statutory remedies under schedule 2 to the Competition and Consumer Act 2010, called the Australian Consumer Law (ACL), in respect of misleading or deceptive conduct and false representations in respect of certain specific matters (including as to origin or quality) under section 18 and 29 of the ACL, subject to specific provisions relating to such conduct in relation to "country of origin representations" in part 5-3 of the ACL.

In Australia, a GI, whether registered or not, may also be used as a basis of objection to a trade mark application by IP Australia and as a basis of opposition to a trade mark application by a third party. Section 61 of the Trade Marks Act 1995 provides a ground for objection on the basis that the applied for mark comprises a GI to be used on goods not originating in the designated region, "if the claimed goods are similar to the designated goods, or the use of the mark in respect of the claimed goods would be likely to deceive or cause confusion". It is not necessary to show that confusion will occur, though if it can be shown that confusion will occur in fact, of course the opposition will be likely to succeed.

An application for registration of a collective mark or a certification mark may be opposed in the same way that any trade mark application may be opposed. Once registered, such marks may also be cancelled in the same way as ordinary registered trade marks, most commonly on the grounds of non-use for a period of three years ending one month prior to the date of an application for removal.

In respect of applications in respect of wine under the WACA, once a determination has been made by the GI Committee in respect of a new Australian or foreign GI, and the application has been accepted, third parties are invited to make written objections to the registration of the proposed GI. There are a number of grounds of objection including on the basis of a trade mark registration or application comprising the proposed GI or a term that is likely to be confused with the proposed GI.

In the case of wine registered under the WACA, the Geographical Indications Committee of Wine Australia may, either on its own initiative, or in response to an application by a third party, determine that a GI is to be removed from the register on the grounds that it is not in use.

Case study: King Valley

In 2007, the Full Court of the Federal Court of Australia in Baxendale's Vineyard v Geographical Indications Committee, sitting on appeal from a decision of the Administrative Appeals Tribunal) had to decide the competing claims of two groups seeking the listing of wine GIs under the WACA. One sought the listing of King Valley in respect of wines produced in the King Valley in northeastern Victoria and another seeking a decision that their area, the Whitlands High Plateaux, an area wholly within the geographical boundaries of the area claimed by the King Valley vignerons, should not be included in the King Valley appellation at all.This appeal was dealt with in a very legalistic way, which is not surprising as the appeal could be based only on an error of law in the decision that was appealed. The requirements of the WACA as determined in the earlier decision in Beringer Blass Wine Estates v Geographical Indications Committee (which related to the Coonawarra appellation) were not in doubt. The court accepted that the Tribunal had properly taken into account the differences between the two claimed regions, and that there were differences in grapes grown, in growing techniques, in climate and in soils between the two areas. However, the court nevertheless found that it was an available conclusion for the tribunal to find that there remained sufficient qualities common to the whole of the King Valley, including the Whitlands plateau, for the whole area to be included within a single appellation. The decision provides a valuable overview of the relevant legislation, a precursor to the WACA but with similar governing principles. Also of interest is a 2005 decision of the Australian Trade Marks Office in Ross & Veronica Lawrence, which concerned an application for the trade mark Feet First for wine in class 33. In this decision, it was established that the appearance of a word, in this case First on the Register of Protected GIs and Other Terms, being a sub-region within the Einzellagen wine growing area of Germany, did not automatically preclude registration of this mark or require that it only be used on wines for this region. Some common sense would be applied when the relevant word had a more familiar English meaning, in particular in the context of a familiar expression such as "feet first".

Peter Knight and Alison McGinn Banki Haddock Fiora Sydney

Chile

Geographical indications (GI) and appellations of origin (AO) are protected by Law 19,039 on industrial property, title IX articles 92 to 105. (Collective trade marks and trade marks of certification are regulated as well.) The background to the law on GI and AO is Article 28 of Law 18,455 that fixes norms on the production, elaboration and commercialisation of ethyl alcohol, alcoholic beverages and vinegar and that indicates as "Denominaciones de origen" (AO) pisco, pajarete and vino asoleado. Together with this norm there is Decree 464 on viticultural zoning. According to Law 19,039, GIs and AOs protect products that come from the country or from a region or locality, provided that they have a quality, reputation or other characteristic that is attributable to their geographic origin. In the case of AO, they must also present human and natural factors that coincide with the characterisation of the product.

Any type of product can be protected by recognition as a GI or AO, provided that is complies with the requirements set forth in the Law on Industrial Property, in its regulation or other special norms. Consequently there are no excluded products as happens with services that, in accordance with our legislation, are not protected as GI.

Expressions cannot be registered as GIs and AOs according to Article 95 of Law 19,039, which indicates that one cannot register those expressions that are in line with the legal definition of Article 93, those that are immoral or go against good customs, those that can induce the public to commit error regarding the geographic origin, nature, manner of manufacture, characteristics or qualities, or the applicability for the employment or consumption of the product. Furthermore, one cannot recognise as a GI or AO expressions that are common or generic indications to distinguish the product concerned, unless they have been recognised as GIs or AOs by international treaties that have been ratified in Chile. Also, those that are equal or similar to another GI or AO for the same product shall not be registered. However, concerning GIs or AOs that are homonyms for wines, the existence of more than one registry shall be possible, provided that they incorporate elements that ensure that consumers will not be led to error or confusion (Article 95).

Article 20 of Law 19,039 indicates that signs that induce error or trickery with respect to the place of origin, quality or type of the products, services or establishments, including those belonging to different classes whose coverage is related to or indicates a connection with the respective goods, services or establishments and the GIs and AOs in relation to the subject matter that they protect, cannot be registered as a trade mark.

The registration of a GI or AO may be done by any person, natural or legal, provided that he represents a significant group of producers, manufacturers or craftsmen, regardless of their legal status, whose lands or establishments of extraction, production, transformation or elaboration are within the delimited zone established by the geographic indication or appellation of origin requested and comply with the other requirements indicated in this law. National, regional, provincial or communal authorities may also request the recognition of a GI or AO when dealing with GIs or AOs located within the territories of their respective competence.

The duration of an IG or AO is indefinite to the extent that it complies with the requirements of its nature. GIs and AOs do not require renewal as commercial brands do. The fee to pay is the same as for trade marks.

The treatment that foreign GIs and AOs receive is the same as a Chilean IG and AO receives. The only difference is that when dealing with foreign GIs and AOs it is necessary to show that there is protection in the country of origin whether as a brand, distinctive product or at least by some special law.

We are frequently asked whether an IG or AO can serve as a basis to oppose a registered trade mark or a domain name and the answer is a certain yes, because the underlying criteria is always to free the consumer from error, confusion or trickery. Article 20 of Law 19,039 mentions the prohibition on registering a trade mark that corresponds to a Denominación de origen.

One must remember that the principle of trade mark specificity applies both to trade marks and to GIs and AOs (at the time of filing a request for a GI or AO one must specify the class related to the protected product). One could argue that there is an exception to that principle for famous and well-known signs.

In the area of domain names, in Chile, when one requests a domain name, a time period of 30 days begins to run so that the persons or organisations that feel that they are affected may object, generating a mediation process and an eventual arbitration trial if an agreement is not reached through mediation. In these matters the prevailing trend has been to grant the domain name to the party who "manages to prove a preferential right", danger of error or confusion, or if there was bad faith in the application. Therefore, if a locality holds a GI and manages to show a greater right than the first applicant, the domain name will be delivered to the second applicant.

It is possible to analyse the problems that arise from the IG and AO, trade marks and domain names in the light of antitrust regulations and on consumer abuse because they converge in the same legal protection needs.

While the procedure, in our opinion, is not complex, INAPI is meticulous when it comes to reviewing the applications, and reports, in such a manner that if the paperwork is not precisely prepared, it will receive limitless observations until the defects in the filing are totally remedied. We recommend being very precise especially in the elaboration of the technical report because INAPI pays particular attention to this element.

The procedure for registering GIs and AOs is well regulated and in the absence of setbacks or observations a registration can be obtained within one year. One must file a form with the essential data that describes the product together with a regulation of use and a technical report elaborated by an expert in the subject matter that shows that the product complies with the requirements to be protected. In the case of lobster from Juan Fernández (the first maritime product to be protected as a GI in Chile) we contracted one of the most prestigious researchers in Chile, Patricio Arana, who carried out a meticulous genetic analysis that demonstrated that Chilean lobster is a unique species (Jasus Frontalis), which is only produced on Juan Fernándezi, Chile.

In some cases the protection of a product as a GI has been based on market research showing the fame and prestige of the product; this was the case of tuna fish from Easter Island.

Gonzalo Sánchez Serrano
Silva & Cia
Santiago

EU

In the EU there is one of the strongest so-called sui generis systems for the legal protection of GIs at EU level for certain products. At national level, EU member states may have regulations for other products.

At the same time at country level, the Trade Mark Directive allows collective or certification/guarantee marks and based on it some member states have both (Denmark, Spain, France, UK). At EU level there are only Community collective marks, although certification marks are in projected amendments.

Through the sui generis system only agricultural products and foodstuffs, wines, aromatised wines and spirits are eligible for protection, as described or listed in their respective regulations. For other categories of goods, each member state decides. Several member states protect handicraft goods through their national systems (Czech Republic, Hungary, Portugal). All goods and services can be protected as collective and certification/collective marks.

Under the EU scheme GIs are names identifying products which originate in a specific place, region or country, there being a link between the geographical place identified by the name and the product. This is stronger in the case of designations of origin (DOs) than GIs, as for the first all the production steps must take place in the defined geographical area, while for the latter one step suffices. In principle, for the first their quality or characteristics must be essentially or exclusively due to a particular geographical environment with its inherent natural and human factors, while for the latter it is sufficient if their given quality, reputation or other characteristic is essentially attributable to its geographical origin.

Regarding protection of geographical names as Community collective marks, regulations derogate the ground for refusal concerning their descriptive character as to the origin of the goods, but do not entitle the proprietor to prohibit a third party from using the signs or indications, provided it uses them in accordance with honest practices in industrial or commercial matters. In particular, such a mark may not be invoked against a third party that is entitled to use a geographical name. Similar provisions are included in the Trade Mark Directive for national legislation in member states for collective and certification/guarantee marks.

Once a GI is protected under the EU schemes, it lasts for ever, unless it is cancelled (very exceptionally). Trade marks last 10 years, although they can be renewed for equal periods without any limit.

For protecting GIs at EU level there is no official fee at the Commission, although member states are authorised to set them for the costs they incur concerning the application, oppositions or cancellation. For marks, there are always fees.

As to the EU GI schemes, there are only certain differences required by the very nature of the situation. As a general rule, the proceedings for obtaining protected EU GIs consist of a national phase before the national authorities of the member state where the GI originates, and, if it is approved, a phase before the EU Commission. For foreign GIs, proceedings start directly at the EU Commission, although its home registration must be proven.

With the protection of GIs through trade mark law, or other non-specific legislation (unfair competion, consumer protection) there are no differences.

With GIs protected under the EU schemes, when a trade mark collides with a prior GI, the trade mark must be rejected or cancelled.

Although, in principle, as with any other type of trade mark, a collective/certification/guarantee mark consisting or containing a geographical name could be able to cause the rejection/cancellation of a colliding later mark, the question could be debatable when the alleged collision is due to a coincidence or similarity with said name (see above question 1).

GIs or similar names can also block as absolute grounds (with descriptive or deceptive marks or those protecting wines and spirits in application of article 23 of TRIPs and other specific prohibitions based on the protection of GIs included in some legislation) or relative grounds in some cases.

As to the domains, some national domain extensions foresee the possibility of cancelling a domain that collides with a GI.

When it comes to proving confusion, in the EU sui generis protection goes beyond confusability or deception and extends itself to cases where using the name exploits the reputation of the protected GI name and, finally, possibly the aspect where the strength of the protection can be observed at its most is the protection against any misuse, imitation or evocation, even if the true origin of the products or services is indicated or if the protected name is translated or accompanied by delocalisers, even without confusion. Protection reaches, at least in the case of certain products, even cases where those products are used as ingredients or the GI is used in services.

Protection is also possible in member states through Unfair Competition or Consumer Protection acts or provisions included in other non-specific laws.

In case of GIs registered as trade marks, the usual grounds for challenge are applicable with the exception of descriptive character as to the origin, which cannot be objected to Community collective marks and to collective marks in some national systems.

In the case of protected GIs (GI or DO) oppositions can be filed at the national stage in the member state where the GI originates by any person with a legitimate interest and establishment or resident on its territory or, at the Commission stage, by those established or resident in a different member state. In the case of spirits the EU regulations do not mention a national stage and the opposition before the Commission can be filed by those established or resident in any member state.

As to the cancellation, the Commission may, on its own initiative or at the request of any person with a legitimate interest, adopt implementing acts to cancel the registration of a DO or GI, where compliance with the conditions of the specification is not ensured. Additionally in the case of agricultural products and foodstuffs, the Commission may do it where no product is placed on the market under that name for at least seven years.

EU regulations expressly exclude a GI becoming generic. Marks can.

There are several. As one example, the refusal by the Spanish office of trade mark Cafe Nariño (device) for colliding with the protected Gi Cafe De Colombia, with Nariño a very important coffee growing area within that GI.

Miguel Angel Medina Elzaburu Madrid

New Zealand

It is not possible to register geographical indications in New Zealand at present. There has for many years been a Geographical Indications Act dealing with wines and spirits only, but it has never come into force, and has no legal effect. It seems unlikely the Act will come in to force in the near future, and for the foreseeable future, so there is no way of registering GIs in New Zealand. The Act has been put on hold because of international negotiations relating to an international wines and spirits register, and because there has been debate over whether the Act should include goods other than wines and spirits.

Unlike some other countries, there are no special categories of goods that receive protection because of international treaties or specific industry-related laws.

To the extent that geographical indications are protected, they are protected by passing off and the Fair Trading Act (no misleading or deceptive conduct), or else by way of a trade mark registration.

The best example of protection of a geographical indication under passing off is the Champagne case where the French winemakers were able to prevent sparkling wine producers from calling their wine Champagne in New Zealand. In Wineworths Group v Comite Interprofessionel du Vin de Champagne, the French winemakers association sued an Australian maker of sparkling wine under passing off for calling its wine Champagne. The case revolved around whether New Zealand consumers understood the word Champagne to mean wine from a specific region in France, or whether it was a generic term for sparkling wine. The French winemakers were successful, and have actively policed use of the term Champagne ever since. By contrast, the same result was not reached in Australia. The evidence in Australia was said to demonstrate that Australian consumers understood Champagne as meaning the particular wine from France, but also wine from other countries (not just France), made by the natural fermentation method.

In order to succeed under passing off or the Fair Trading Act, or to obtain a trade mark registration, it would be necessary to show that there was a reputation and goodwill attaching to the geographical indication. The main difficulty would be in proving that the geographical indication has not become generic.

A trade mark application or registration could be challenged on the basis that use of the mark would be likely to confuse or deceive, or that the use of the mark would be contrary to law (passing off or breach of the Fair Trading Act in that use of the mark would be misleading or deceptive). It would be necessary for all of these grounds to show that there was a reputation and goodwill attaching to the geographical indication, which would be challenging. It would also be necessary to show a likelihood of confusion, deception or being misleading.

It is possible to challenge a .nz domain name on the basis that the registration is an "unfair registration". An unfair registration includes one where the domain name is blocking a name or trade mark in which the complainant has rights, and that the domain name is being used in a way which is likely to confuse, mislead or deceive.

If a geographical indication was protected as a trade mark registration, it would be possible to have the trade mark registration removed on the basis that the mark had become a common name. Similarly, if the owner of the GI was trying to rely on passing off or breach of the Fair Trading Act, such an action would not be successful if the GI had become generic. For example, it would be difficult to show that terms such as tequila and feta had not become generic. Although the French winemakers were successful in New Zealand in relation to Champagne, it was not an easy case.

In 2008, there was a successful trade mark opposition to the trade mark K-Swiss for watches by The Federation of the Swiss Watch Industry.

The Scotch Whisky Association was unsuccessful in a trade mark opposition to Macgowans. This case did not technically involve a GI, but it was opposed on the basis that consumers would believe it was Scotch whisky.

These types of cases will turn very strongly on the evidence. It is important that the GI owner puts together strong evidence, particularly from consumers showing what they understand the GI to mean.

Kate Duckworth Catalyst IP Wellington

South Africa

South Africa does not have a separate procedure for the registration of geographical indicators. However, the Trade Marks Act provides a level of protection.

Protection as trade marks: Geographical indicators cannot be registered as ordinary trade marks if they amount to marks which exclusively describe the geographical origin of the product concerned. However, such marks may be registered as collective or certification trade marks. A geographical indicator may be registered as a certification mark if it is capable of distinguishing goods which are certified as being of a specific geographical origin from those which are not. However, the proprietor of such marks cannot trade using them. A collective trade mark must distinguish members of a group from non-members. The Draft National Policy on Intellectual Property confirms that, for the time being, the geographic indicators will primarily be protected through collective and certification trade marks.

Under the Trade Marks Act there is no substantive difference in the protection available to domestic and foreign geographic indicators. However, where the registration is sought in the name of a foreign entity, certain procedural provisions apply, such as the requirement of a local address for service. The Liquor Products Act and the Agricultural Products Standards Act do not distinguish between the protection for foreign and domestic geographic indicators. However, the Wine of Origin Scheme is specific to South Africa wines. The protections in the Consumer Protection Act and the Merchandise Marks Act are generic and apply equally to foreign and domestic indicators.

Registered marks: Where protection for a geographic indicator is obtained through a collective or certification mark this provides the same protection to that afforded to ordinary trade marks. This includes the ability to prevent similar registrations by other parties, to prevent unauthorised use and to claim compensation. However, this protection is limited to marks which are likely to cause confusion and are used or registered in respect of similar goods and services to the collective or certification mark.

The Trade Marks Act also provides that the bona fide descriptive use of a geographical indicator does not amount to infringement of a registered trade mark. This substantially limits the effectiveness of protecting geographic indicators through collective and certification marks.

Other forms of protection: The Liquor Products Act authorises the Minister of Agriculture to establish schemes in respect wine. The name of an area of South of Africa or any other piece of land designated under a scheme may not be used in respect of wine without the permission of the scheme concerned. This system is implemented through the Wine of Origin Scheme. Under this scheme the area of production of a particular wine may only be indicated after certification by the Wine of Origin Scheme. However, the prohibition on the use of geographical indicators on South African wines does not restrict the use of trade marks incorporating geographical indicators which were in use when the Liquor Products Act entered into force in 1990.

The Liquor Products Act also provides that no statement may be made on liquor product which indicates that the product originates from a country other than the true country of origin. Furthermore no description, textual or otherwise, may be applied to a liquor product if it is likely to create a false impression regarding the origin the product. While the protection under the Liquor Products Act does not provide for registration of geographical indicators, by preventing false claims of origin, it protects against their misuse. The Wine of Origin Scheme provides comprehensive protection for geographic indicators in the South African wine industry.

The Agricultural Products Standards Act prohibits the use of any mark which creates a false impression regarding the quality, origin or place of production of a product.

The Consumer Protection Act provides prohibits misleading marketing claims, particularly if this is likely to lead to a misconception regarding the properties of a product. The creation of a false impression regarding the origin of a product in order to obtain a commercial advantage will amount to common-law unfair competition, which would allow competitors to interdict the statement and claim damages.

Ministerial Prohibitions: Under the Agricultural Products Standards Act and the Liquor Products Act, the Minister of Agriculture is empowered, in order to ensure compliance with international obligations, to prohibit the use of any geographical indicators including where these are use in conjunction with terms such as "like", "kind" or "style". The Merchandise Marks Act empowers the Minister of Trade and Industry to prohibit or regulate the use of any mark used in the course of trade. This would include the power to restrict the use of geographical indicators. However, to date, none of these mechanisms has been used to protect geographical indicators. But Rooibos and similar marks have been declared prohibited words under the Merchandise Marks Act.

A collective or certification trade mark may be opposed prior to registration, or subsequently expunged, if it does not meet the requirements for registration. A registered mark may be cancelled if the applicant did not have a bone fide intention to use the mark or, for a period of five years, has not used the mark.

The requirements for registration of collective and certification marks, and therefore the grounds on which they may be opposed, differ slightly from ordinary trade marks. The ability to distinguish goods which have a certain quality or origin is sufficient to register such a mark. Therefore, the inherent descriptive nature of geographic indicators cannot sustain a challenge to either of these types of marks. However, they may be opposed on the basis of any other ground of opposition, notably if the mark is likely to cause confusion or deception or if the registration would be unlawful or immoral.

In Century City Apartments Property Services CC v Century City Property Owners Association it was held that the public interest necessitates that geographic indicators remain available for descriptive use.

In Groupe LFE (SA) (Pty) Limited v Swartland Winery Limited the respondent alleged that the use was descriptive and therefore could not constitute trade mark infringement. It was held that as other, clearer descriptors featured less prominently on the bottle, the larger, unqualified, use of the geographic indicator was trade mark use.

These cases indicate that registration will not exclude bone fide descriptive use. This approach will most likely be followed in any litigation regarding collective or certification marks. However, the latter case does indicate that a strict test will be followed when determining whether use of a geographic indicator is genuinely descriptive or whether the use attempts to leverage a benefit from the goodwill of the geographic indicator.

Darren Olivier and Ian Learmonth Adams & Adams Pretoria

United States

The US treats geographical indications as a subset of trade mark law, using certification marks and collective marks to protect all types of goods from any nation. At the federal level, this is done under the Lanham Act, which provides for the registration of certification and collective marks with the USPTO, a preferred method for securing protection for symbols certifying the regional or other origin of relevant goods and services. Additionally, such marks can accrue rights at common law based on use.

Since 2003, the US Treasury's Alcohol and Tobacco Tax and Trade Bureau (TTB) has administered appellations of origin, generally applicable only to grape-based wines, using federal regulations separate from trade mark law per se to regulate the use of geographic names on wines in the US and thereby prevent consumer confusion. Because this system seeks to prevent the use of false or misleading statements that could deceive consumers, rather than protect or advance the interests of producers, we will focus predominantly on federal registration as governed by the Lanham Act in answering these questions.

Despite the Lanham Act's general prohibition on the registration of primarily geographically descriptive marks, US trade mark law recognises an exception allowing a geographical name to be registered as a certification mark. A certification mark is defined as "any word, name, symbol or device...(1) used by a person other than its owner, or (2) which its owner has a bona fide intention to permit a person other than the owner to use...to certify regional or other origin, material, mode of manufacture..." Our law firm has registered a number of geographic certification marks in the US including Swiss for chocolate from Switzerland, Darjeeling for tea from India, and Madeira for wine from Madeira.

Additionally, some indications of geographic origin are registrable under the Lanham Act as regional collective marks. Collective marks are owned by a guild, collective, or other type of group, and used by that group's members, for the benefit of the group. The following collective marks have been registered in the US and indicate regional origin: Frankfurter Äpfelwein for apple-based wine from Frankfurt, Germany; and Deutsches Eck for beer from two specific areas of Germany. Notably, registration of a geographic indication as a regional collective mark may require a showing of acquired distinctiveness.

The fees associated with filing applications for certification and collective marks are the standard USPTO trade mark filing fees (which are approximately $275-$375 per class of goods for initial filing fees); and the term of protection is perpetual provided that use can be demonstrated. Note that the examination procedures for certification and collective marks at the USPTO are somewhat different than the analogous procedures for examining standard trade marks and service marks; for example, the specimen that must be submitted to demonstrate use of a certification or collective mark differs from the standard trade mark specimen, because the demonstrated manner of use differs (certification marks are used by person(s) other than the mark owner; and collective marks are used by members of a group for the group's benefit).

To the extent registration as a trade mark is possible, there are no special requirements for protecting foreign certification marks or collective marks as opposed to domestic certification or collective marks.

Generally speaking, the owner of rights in a certification mark or collective mark, especially where federally registered, can effectively block registration or use by a junior user of a confusingly similar mark. In such case, the party asserting rights would generally need to demonstrate a likelihood of confusion to prevail.

The Lanham Act provides causes of action for various acts of so-called unfair competition, including a cause of action for the deceptive use of geographic terms. However, this protection in the context of the misleading use of geographic indications has been criticised as inadequate because the requirement to show damage has often been difficult to prove.

Only if a geographical name that has been registered as a trade mark were to acquire principal significance as "a description of those goods" rather than "an indication of source" would a mark become subject to cancellation as being generic.

Notably, a registered certification mark may be subject to cancellation if the owner does not "control" use of the mark. We are not aware of a case cancelling a registration for lack of control alone, but the examining manual for the USPTO, along with relevant cases and the Lanham Act, generally speak to the importance of the owner's actual control (via licensing and the standards that must be filed in association with an application).

In a recent decision of the USPTO's Trademark Trial and Appeal Board (TTAB), a French party asserting common law rights in the certification mark Champagne opposed registration of the mark Champarty on the basis of a likelihood of confusion, and the opposition was denied. Though this decision is expressly non-precedential, TTAB's ultimate holding that the marks were too dissimilar for confusion to occur may indicate that the TTAB is loathe to accord broad protection to geographic indications, no matter how famous.

Nadine Jacobson and Ashford Tucker Fross Zelnick Lehrman & Zissu New York