In brief 3 min read
Australian businesses may have to change the names of a range of food, drinks and agricultural products after the EU asked Australia to protect a list of hundreds of names under the proposed Australia-EU Free Trade Agreement (A-EU FTA). Australian businesses may have to stop using the names listed, as well as a range of related names, eg 'parmesan'; comparative advertising that references a listed name; or packaging that 'evokes' the place indicated by a name. Interested parties have an opportunity to lodge objections to the EU's list by Wednesday, 13 November 2019.
Background – putting goods in their place
Geographical indications (GIs) identify goods as originating in a geographical place and, as a result, associated with some quality, reputation or other characteristic. Australia mainly protects GIs as certification trade marks, with a separate registration system for wine GIs.
The EU wants Australia to give much stronger protection to a list of EU GIs for food, agricultural products, wines and spirits. Each EU GI has a specification that sets out where the product must come from and how it must be produced. The names are not all geographical: eg the GI 'Feta' simply means 'slice'. The proposal (lifted from EU law) goes much further than the EU's other recent FTAs.
The EU's ask in the A-EU FTA
First, EU GIs would be not permitted to be used (directly or indirectly - even in translation or with expressions like 'style', 'type' or 'method') for comparable products that do not meet the specifications. Because 'Feta' is listed, Australian cheese would not be permitted to be called 'feta' or even 'feta-style'. 'Scotch Beef' is listed, which may prevent Australian beef being sold as 'Scotch fillet beef'.
In addition:
- The EU wants to prohibit 'evocation' of a GI. Based on the EU's interpretation, because Parmigiano Reggiano is a GI, cheesemakers outside the region cannot use 'parmesan'. Because 'Queso Manchego' (a type of cheese from La Mancha) is a GI, makers of non-Manchego cheese cannot depict Don Quixote on packaging (even in La Mancha), because the image 'evokes' La Mancha.
- Comparative advertising is likely to be affected because current Australian law protecting comparative advertising does not extend to a separate GI system. Advertisers may not be able to say a generic product can be substituted for the GI-protected product.
- Downstream processors and producers using imported GI-protected products will face new restrictions. In the EU, a 'Roquefort sauce' cannot contain any non-Roquefort blue-veined cheese. Prosciutto di Parma cannot be sold as 'Parma ham' if it is pre-sliced and repackaged by a supermarket outside Parma.
- Whereas trade marks usually follow a 'first in time, first in right' rule, the EU wants EU GIs to be protected in some circumstances even if they conflict with an earlier trade mark. Unregistered trade marks, and registered trade marks that are not well known, are particularly at risk.
Next steps
Objections to the EU's list, or part of a name or a translation, transliteration or transcription need to be lodged by Wednesday, 13 November 2019 (with reasons based on specified grounds). Interested parties should consider the full implications of the EU proposal beyond the listed names, and bear in mind relevant EU cases applying these provisions.