Faculty of Law and Criminology

Academic Year 2018-19

Exam Session [1]

LLM Paper

by Elyse Kneller

Student number: 01811157

Promoter : Professor Inge Govaere

EU-Australia FTA: Challenges and Potential Points of

Convergence for Negotiations in Geographical Indications

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Abstract The European Union (EU) - Australia free trade agreement is currently in its fourth round of

negotiations, since 18 June, 2018. This paper examines how Geographical Indications are

likely to fare in these negotiations, given that Australia and the EU have historically clashed

over agricultural policy in international trade and have opposing legal approaches to

protecting Geographical Indications, apart from wines. Specifically, this paper is concerned

with the main challenges facing the EU and Australia on Geographical Indication related

matters, as well as the main areas of convergence between both Parties. It begins with an

outline of the EU and Australia’s current Geographical Indication legislative frameworks,

before exploring both Party’s respective interests for including them in the intellectual property

chapter of the free trade agreement. Then, it identifies and analyses the main challenges

confronting the Geographical Indication discussions within the trade negotiation context, and

concludes by determining the main potential points of convergence. This paper is thus relevant

to understand the current relationship between the EU and Australia on Geographical

Indications, the relative stakes for concluding ambitious Geographical Indication provisions in

the free trade agreement, and the retrospective comparison of Geographical Indication reform

after this agreement has been implemented.

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Contents Abstract ...................................................................................................................................... 3

List of Abbreviations .................................................................................................................. 5

Introduction ................................................................................................................................ 6

Chapter 1 .................................................................................................................................. 11

Australia and the European Union’s Geographical Indication Frameworks ........................ 11

Australia’s Geographical Indication Framework .............................................................. 11

European Union’s Geographical Indication Framework .................................................. 17

Chapter 2 .................................................................................................................................. 21

Underlying interests and demands for Geographical Indications in the EU-Australia FTA 21

European Union’s Geographical Indication interests and demands ................................. 21

Australia’s Geographical Indication interests and demands ............................................. 25

Chapter 3 .................................................................................................................................. 30

Main challenges of Geographical Indication negotiations in the EU-Australia FTA .......... 30

Chapter 4 .................................................................................................................................. 41

Main potential points of convergence for Geographical Indications in the EU-Australia FTA

.............................................................................................................................................. 41

Conclusions .............................................................................................................................. 50

Bibliography ............................................................................................................................. 52

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List of Abbreviations

CAP: Common Agricultural Policy

CJEU: Court of Justice of the European Union

CTM: Certification Trademark

EC: European Community

EU: European Union

EPA: Economic Partnership Agreement

FTA: Free Trade Agreement

GI: Geographical Indication

IP: Intellectual Property

MS: (European Union) Member States

TRIPS: Trade-Related Aspects of Intellectual Property

WTO: World Trade Organisation

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Introduction

In November 2015, the Australian Government together with the European Union (hereafter

EU) agreed to work towards the launch of negotiations for a comprehensive Free Trade

Agreement (hereafter FTA), in order to deepen the relationship established in the EU-Australia

Partnership Framework in 2008.1 On 18 June, 2018, these FTA negotiations were launched,

with strong ambitions for bilateral market access, economic growth, job opportunities and a

commitment to a positive trade agenda.2 Currently, the EU and Australia are heading into their

fourth round of negotiations that is scheduled to take place in July, 2019.

Historically, the EU-Australia trade and economic relationship has not been smooth sailing.3

Despite the most obvious constraint of distance, the major source of tension that dominated the

relationship for several decades was the EU’s Common Agricultural Policy (CAP).4 Introduced

in 1962 by the European Community (hereafter EC) at that time, the CAP did not have an

impact on Australia until 1973 when the United Kingdom acceded to the EC and as a result

restricted Australia’s deep access to Britain’s agricultural market.5 Coupled with the strong

presence of the EC’s export-subsidised agricultural goods on the international market, Australia

was a key opponent to the EC’s CAP over many years and governments.6 This issue has been

described as ‘one single focus of intense conflict’ which ‘has eclipsed all other aspects of the

relationship for many decades’.7

Thus, with the EU’s CAP reforms in 1992, which considerably reduced protectionist measures

and restricted export subsidies, the ties between the EU and Australia improved.8 This was made

clear by the successful conclusion of the Uruguay Round of negotiations for the General

Agreement on Tariffs and Trade (GATT) in 1994 that not only boosted Australia’s exports to

the EU two-fold, but also set the tone for stronger multilateral cooperation based on trade

liberalisation and rules-based trade.9 Both the EU and Australia were proponents and even

1European Commission, ‘Statement of the President of the European Commission Jean-Claude Juncker, the

President of the European Council Donald Tusk and the Prime Minister of Australia Malcolm Turnbull’

(Brussels, 15 November 2015) < http://europa.eu/rapid/press-release_STATEMENT-15-6088_en.htm>

accessed 7 May, 2019; European Union–Australia Partnership Framework

<https://eeas.europa.eu/sites/eeas/files/partnership_framework2009eu_en.pdf> accessed 7 May, 2019 2European Commission, ‘EU-Australia Trade Agreement Launching trade negotiations with Australia’ (June

2018) <http://trade.ec.europa.eu/doclib/docs/2018/june/tradoc_156941.pdf> accessed 9 May, 2019;

Australian Government, ‘Why is the Australian Government pursuing a free trade agreement (FTA) with the

European Union?’ (June 2018)

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/Documents/australia-european-union-fta-fact-

sheet.pdf> accessed May 9, 2019 3Elijah, Kenyon, Hussey and Van der Eng, ‘Introduction: Australia, the European Union and the New Trade

Agenda’ in Australia, the European Union and the New Trade Agenda (ANU Press, 2017), 2 4Yencken, ‘Like-minded partners in the Asia-Pacific region? The EU’s expanding relationship with Australia’

(2015) 13 Asia Europe Journal 425, 426 5Yencken, ‘From the Common Agricultural Policy to the Eurozone Crisis: Bilateral Disputes in the Australia–EU

Relationship’ (2018) 107 5 The Round Table 585, 587 6Ibid 7Murray and Zolin ‘Australia and the European Union: conflict, competition or engagement in agricultural and

agri-food trade’ (2012) 66 2 Australian Journal of International Affairs 186, 186 8Elijah et al. (n.3) 2 9Yencken, ‘From the Common Agricultural Policy to the Eurozone Crisis’ (n.5) 588

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considered as ‘allies’ for the Doha Round of multilateral negotiations that launched in 200110,

committed to further strengthening the new disciplines of the World Trade Organisation (WTO)

that posed the greatest barriers to trade liberalisation. Including ‘behind the border’ obstacles

of services, intellectual property (IP), labour standards, investment and competition policy.11

However, due to the continual deadlock of these multilateral discussions to create deep and

effective integration in these areas, the EU and Australia have both set about the conclusion of

bilateral and plurilateral FTAs with their leading trading partners. Since 2003, Australia has

committed itself to an open global economy by emphasising the reduction of non-tariff barriers

in ten progressive FTAs with Singapore, Chile, China, Thailand, Japan, Malaysia, Korea,

United States, ASEAN (including New Zealand) and finally, the Comprehensive and

Progressive Agreement for Trans-Pacific Partnership (CPTPP) in December, 2018. Similarly,

the EU adopted a new direction in trade policy in 2006 with its Global Europe strategy.12 This

strategy recognised the potential of bilateral and regional FTAs to pave a faster path to

‘openness and integration’ in the world economy that could serve as a ‘stepping stone’ for

stronger cooperation at the multilateral level.13 As a result, it has concluded ambitious

agreements with Singapore, South Korea, Vietnam, Canada and Japan, and is in the process of

negotiating others, including with New Zealand.14 It’s recent Trade for All policy strategy in

2015, further reiterated the importance of moving forward with these bilateral trade agreements,

especially in the Asia-Pacific region, to tackle persistent barriers to EU exports and to secure

protection for social and environmental trade matters.15

It is therefore in this context that Australia and the EU currently find themselves in the

negotiations of a deep and comprehensive FTA as ‘like-minded partners’, protecting and

promoting a rules-based international order.16 One must only look at the recent momentum

against liberalised trade, such as the United States’ withdrawal from the Transatlantic Trade and

Investment Partnership and the Trans-Pacific Partnership, punitive tariff increases between the

world’s largest trading blocs and even Brexit, to understand that the EU-Australia FTA is a

powerful symbol of international cooperation based on fair and mutually-beneficial trade. It is

also an ambitious agreement. The negotiating mandates do not only tackle traditional regulation

10Nicolaj, ‘Speech to the ANU Centre for European Studies, Delegation of the European Union to Australia’, 16

January (2012)

<http://eeas.europa.eu/delegations/australia/documents/press_corner/120202_speech_an_anu_summerschool

jan2012.pdf> accessed 7 May, 2019 11Elijah et al. (n.3) 3 12European Commission, Communication from the Commission to the Council, The European Parliament, The

European Economic and Social Committee and The Committee of the Regions, ‘Global Europe: Competing

In The World; A Contribution to the EU's Growth and Jobs Strategy’, Brussels, 4.10.2006 COM(2006) 567

final 13Ibid, 8 14European Commission, ‘Overview of FTA and other Trade Negotiations’ (March 2019)

<http://trade.ec.europa.eu/doclib/docs/2006/december/tradoc_118238.pdf>, accessed 8 May, 2019 15European Commission, ‘Trade for all Towards a more responsible trade and investment policy’ (2015)

<http://trade.ec.europa.eu/doclib/docs/2015/october/tradoc_153846.pdf> accessed 8 May, 2019, 31 16Greiner, ‘The Australia-EU trade and investment relationship’ (2017) in Tyler and Mochan (eds.) The EU and

Australia Shared Opportunities and Common Challenges, Published on the occasion of the inaugural EU-

Australia Leadership Forum, Sydney, Australia on 2-6 June, 48; European Commission Press Release, ‘EU

and Australia launch talks for a broad trade agreement’ (Canberra, 18 June 2018)

<http://trade.ec.europa.eu/doclib/press/index.cfm?id=1862> accessed 9 May, 2019

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of trade in goods, services and investment, but target inter alia, high standards on sanitary and

phytosanitary measures, IP, government procurement, competition, trade and sustainable

development, and good regulatory practice.17 Both Australia and the EU’s reports of each round

of negotiations so far, illustrate that both parties have been making strong progress to agree on

a lot of these matters.18 That is not to say nonetheless, that the EU-Australia FTA negotiations

are immune from any challenges. Scholars have identified potential obstacles in matters over

agriculture, Investor State Dispute Settlement (ISDS), IP, services in the digital age, government

procurement, as well as sustainable development and human rights conditionality.19 It is outside

the scope of this paper to address all of these areas.

This paper will rather focus on Geographical Indications (hereafter GIs) that are to be included

in the IP chapter of the FTA. Similar to trademarks that help consumers distinguish the

commercial origin of a product, GIs are signs that communicate a product’s geographical

origin.20 In addition to that, they also identify the quality and reputation of agricultural goods

that are ‘derived from a combination of unique regional, environmental and human influences,

such as climate, soil, plants and special methods of production’.21 The fundamental principle

behind GIs is that a geographical area is essential to a reputable product.22 Therefore, producers

that make the same product outside the delineated area should not be permitted to use the name

of the region in marketing or on product labels.23 GIs have been protected under different

international treaties throughout history.24 Yet, their inclusion in the WTO’s Trade-Related

Aspects of Intellectual Property agreement25 (hereafter TRIPS) in 1994 is the most far-reaching

by member state and the level of protection stipulated. TRIPS defines GIs as ‘indications which

17For the EU’s negotiating directives cf. ‘Negotiating directives for a Free Trade Agreement with Australia’

Brussels, 25 June 2018 7663/18 ADD 1 DCL 1; For Australia’s negotiating aims cf. ‘Australia – EU Free

Trade Agreement, Summary of Negotiating Aims and Approach’

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/Documents/a-eufta-summary-of-negotiating-aims-

and-approach.pdf> accessed 9 May, 2019 18Australian Government, ‘Australia-EU FTA – Report on Negotiating Round Three, Canberra, 25-29 March

2019’ (2019) <https://dfat.gov.au/trade/agreements/negotiations/aeufta/Pages/aeufta-round-3.aspx> accessed

9 May, 2019; European Commission, ‘Report of the 3rd round of negotiations for a Free Trade Agreement

between the European Union and Australia’ (25-29 March 2019, Canberra)

<http://trade.ec.europa.eu/doclib/docs/2019/april/tradoc_157864.pdf> accessed 9 May, 2019 19cf. McKenzie, ‘Overcoming legacies of foreign policy (dis)interests in the negotiation of the European Union–

Australia free trade agreement’ (2018) 72 3 Australian Journal of International Affairs 255; Drake-Brockman

and Messerlin (eds), Potential Benefits of an Australia-EU Free Trade Agreement: Key Issues and Options

(Adelaide: University of Adelaide Press, 2018); Elijah et al. (n.3); EU-Australia Leadership Forum, The EU

and Australia: Towards a New Era, Published on the occasion of the 2018 EU-Australia Leadership Forum

Brussels (Australian Institute of International Affairs on behalf of the EU-Australia Leadership Forum,

Belgium,18-22 November, 2018) 20Gutierrez, ‘Geographical Indicators: A Unique European Perspective on Intellectual Property’ (2005) 29

Hastings International and Competition Law Review 29, 31 21Murphy, ‘Conflict, Confusion, and Bias Under TRIPs Articles 22-24’ (2004) 19 American University

International Law Review 1181, 1185-1186 22Raustiala and Munzer, ‘The Global Struggle over Geographic Indications’ (2007) 18 2 The European Journal of

International Law 337, 338 23Ibid 24Geographical indications were protected under Paris Convention for the Protection of Industrial Property

(1883) under the name “false indications”, the Madrid Agreement for the Repression of False or Deceptive

Indications (1891) and the Lisbon Agreement on Appellations of Origin (1958). 25Agreement on Trade-Related Aspects of Intellectual Property Rights, signed in Marrakesh, Morocco on 15

April 1994

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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 characteristic of the good is essentially

attributable to its geographical origin.’26

The main reason why this paper will concentrate on GIs in the EU-Australia FTA negotiations

is because they are particularly contentious. In fact, the EU Trade Commissioner, Malmström,

even acknowledged this point by stating that GIs were likely to be the most ‘difficult’ aspect in

the negotiations.27 Not only do the EU and Australia stand in sharp contrast to each other over

basic principles in GI registration and protection, but GIs are strongly linked to the EU and

Australia’s long-held source of conflict over agriculture policy and international trade. Since

TRIPS, GIs have occupied a general impasse between cross-cultural divides. Not between the

familiar north-south split that has developed in other forms of IP, but between “Old World” and

“New World” migration countries, to which primarily the EU and Australia respectively fall

into.28 This divide is centred over the Old World’s increasing demand of protection for local

traditions and culture in a competitive and globalising world, against the New World’s concerns

that GIs stifle international competition and are merely disguised subsidies for farmers and rural

communities.29 Considering, the EU has explicitly linked the need to protect GIs internationally

with the reforms of the CAP, as one justification for less export subsidies to farmers and a way

for the EU to ‘compete internationally on quality rather than quantity’30, the groundwork for

previous tensions in this debate to resurface in the EU-Australia FTA negotiations has been laid.

With these circumstances currently standing before the EU and Australia in their trade

discussions, the purpose of this paper is to investigate two specific questions that logically

follow. First, where do the main challenges lie in negotiating GIs for the FTA? Second, what

are the main potential points of convergence for GIs in the EU-Australia FTA? That is, whether

there are any areas on GI policy for which both parties can gradually evolve in the course of

negotiations to develop a common, mutually beneficial approach.

In order to do that, this paper relies substantially on the EU’s Intellectual Property textual

proposal for the EU-Australia FTA.31 This publication is a result of the European Commission’s

initiative to improve transparency and openness of all stages of the negotiation and

implementation of trade agreements.32 It communicates the EU’s preliminary proposal to

Australia for the GI provisions, which functions as a comparative tool to the EU’s GI trade

policy objectives.33 To this end, the most recent concluded Agreement between the European

26 TRIPS (n.25) Article 22 (1) 27European Union Trade Commissioner at the Press Conference on EU-Australia Free Trade Agreement, June

18, 2018. Transcript of press conference available at: https://www.malcolmturnbull.com.au/media/press-

conference-on-eu -australia-free-trade-agreement, accessed 10 May 2019 28Raustiala and Munzer (n.22) 339 29Ibid 30European Commission, ‘Why do Geographical Indications matter to us?’ MEMO/03/160, Brussels, 30 July

2003 31European Commission, European Union's (EU) proposal for the EU-Australia FTA, Chapter Intellectual

Property (13 June 2018) <http://trade.ec.europa.eu/doclib/docs/2018/july/tradoc_157190.pdf> 32European Commission, ‘A Transparent and Inclusive Trade Negotiation Process’ September 2017 <

http://trade.ec.europa.eu/doclib/docs/2017/september/tradoc_156041.pdf> accessed 10 May 2019 33DG AGRI, ‘Working Document on International Protection of EU Geographical Indications: Objectives,

Outcomes and Challenges' (2012) Advisory Group – International Aspect of Agriculture, Ares 669394

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Union and Japan for an Economic Partnership34 (hereafter EU-Japan EPA) is used, where

relevant, to highlight certain areas where the EU may be insistent on its textual proposal or

more cooperative in the negotiation of GIs with Australia. These sources together are useful to

identify the main challenges and potential points of convergence with Australia. However,

given the Australian Government refused to publicly release its own initial textual proposal for

GIs after a direct request35, the specific approach Australia is taking to the FTA with the EU is

not known. Therefore, only secondary sources that point to Australia’s probable interests and

objectives for GI protection such as submissions from key players affected by GI policy in

Australia36, as well as the Government’s previously held position in multilateral GI

discussions37 can be used.

First, this paper outlines Australia and the EU’s current legislative frameworks for the

registration and protection of GIs in order to establish a foundation for each party’s starting

place for FTA negotiations. The second chapter then builds on this foundation through an

exploration of the EU and Australia’s underlying interests and demands for including GI

standards in the IP chapter. The third chapter specifically addresses the main challenges

standing in front of the EU and Australia for the agreement on many procedural and practical

matters of GI policy. Lastly, this paper focuses on the similarities between the EU and Australia

in order to determine the main potential points of convergence for GIs in the FTA. All of these

chapters combined are relevant for understanding present and future relations between the EU

and Australia on bilateral GIs.

34Agreement between the European Union and Japan for an Economic Partnership, in force 1 February 2019 35Submitted to thesis supervisor 17 April, 19 36cf. complete list of public submissions at: Australian Government DFAT, ‘Submissions’

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Pages/submissions.aspx> accessed 10

May 2019 37cf. Brink (Australian Permanent Mission to the WTO, Geneva), ‘Perspectives on Geographical Indications:

Prospects for the Development of the International Legal Framework’, Presentation at the International

Symposium on Geographical Indications, Beijing, 26- 28 June 2007

<https://www.wipo.int/edocs/mdocs/geoind/en/wipo_geo_bei_07/wipo_geo_bei_07_www_81778.pdf>;

WTO, Proposed Draft TRIPS Council Decision on The Establishment of a Multilateral System of

Notification and Registration of Geographical Indications for Wines and Spirits (31 March 2011)

TN/IP/W/10/Rev.4

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Chapter 1

Australia and the European Union’s Geographical Indication

Frameworks

In order to understand how both the EU and Australia will fare in the negotiations of GIs for

the upcoming FTA, it is necessary to know each party’s starting positions in relation to GIs. For

this reason, this chapter will first look at how Australia currently registers and protects GIs,

before delving into the approach of the EU. Stark difference in this regard is likely to contribute

to the challenges of agreeing on various GI terms in the FTA or reduce the potential for

convergence.

Australia’s Geographical Indication Framework

The interrelated processes of trade liberalisation and privatisation of the agricultural sector in

Australia in the 1970s were the main factors influencing the need to control and commodify

agricultural based knowledge.38 Before the development of the TRIPS agreement, Australia’s

commercial protection for such knowledge was based on the common law of passing-off and

the equivalent39 of current section 18 of the Australian Consumer Law that permits legal action

against deceptive commercial practice.40 With the signing of the TRIPS agreement in 1994

however, Australia was under an international legal obligation to protect, to the minimum

standard, special agricultural knowledge and products in the form of GIs.41 The way in which

it responded to those obligations was to implement the regulatory practices from both the New

and Old World.42 It’s current GI legal framework is thus two-tiered. One body applies existing

trademark legislation via certification trademarks to GIs. The other body is a sui generis system

for strictly the registration of wine GIs.

Certification Trademarks

The first body is the certification trademark system (hereafter CTM), provided for under the

Trade Marks Act 1995 (Cth). This system incorporates the protection of GIs by certifying goods

or services that possess a particular standard or characteristic. These relate to rules of quality,

accuracy, material, manufacturing method and origin.43 ‘Origin’ requirements are thus used to

implement GIs, typically from foreign countries, within the CTM system. However, origin is

only a minimum requirement to qualify for a CTM as additional standards on quality, content

and processing can also be included.

Section 6 of the Trade Marks Act 1995 (Cth) defines a GI in relation to goods as a sign that

‘identifies the goods as originating in a country, or in a region or locality in that country, where

38Voyce, ‘Geographical indications, the EU and Australia : a case study on “government at a distance” through

intellectual property rights’ (2007) 7 Macquarie Law Journal 155, 156-157 39Section 52 of the Trade Practices Act 1974 (Cth). 40Competition and Consumer Act 2010 (Cth). 41Voyce, (n.38) 162 42 Friedman, ‘Geographical Indications in the EU, China and Australia WTO Case Bottling Up Over Prosecco’ in

Julien Chaisse (ed), European Intergration and global power shifts: what lessons for Asia (Forthcoming,

2018), 7 43Trade Marks Act 1995 (Cth), S 6 (2a)

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a given quality, reputation or other characteristic of the goods is essentially attributable to their

geographical origin.’ It is therefore insufficient for a GI to be registered as a CTM if the product

merely originates from a particular region or locality. Applicants have to prove that a specific

characteristic of their product is solely attributable to this geographical location.44 The specific

characteristic does not have to relate to an inherent quality, such as appearance or flavour.

However, because it is registered under a CTM system, the origin characteristic should be more

distinctive in nature than descriptive.45 This was illustrated by the mark ‘Parish of Pokolbin’

that was refused registration on the grounds that inclusion of the archaic term ‘parish’ did not

sufficiently detract from ‘Pokolbin’ to distinguish itself from the non-certified alcoholic

beverages and hospitality services in the region.46 The reason for this is because CTMs are

essentially private rights, and therefore should not interfere with another producer within a

given area to indicate or brand the origin of their good.47 In other words, the owners of the CTM

should not have the right to monopolise the geographical origin, by preventing others who are

not licensed under the certification to accurately mark the origin of the good.48

Users of the GI provide evidence of their product’s specific characteristic in the set of

certification rules that accompany their CTM application. These rules must also specify other

certification requirements, identify the quality of producers who will have the possibility to

satisfy these requirements and outline the processes of how the rules are assessed.49 Dispute

resolving procedures must also be included.50 These certification rules are initially examined

by the registrar, IP Australia, against general trademark requirements to review the capability

of the CTM to distinguish the goods in light of similar existing trademarks.51 Upon compliance,

the rules are then provided to the Commission, Australian Competition and Consumer

Commission (ACCC), in order to get approval. The ACCC has two examination functions. The

first is to assess the effectiveness of the rules, whilst the second is to assess whether the rules

provided are not a detriment to the public or likely to raise concerns of competition, unfair

practices, product safety, information, and unconscionable conduct.52 One example of where

this would apply is if the rules were specifically designed to prevent a certain competitor from

applying and receiving license to use the CTM.53 If the CTM does not present a risk to one of

these criteria, then the ACCC accepts and approves the rules for the CTM.

The final registration of the CTM can still nonetheless be opposed or rejected. Specific grounds

for opposing a CTM is provided for if the CTM ‘is not capable of distinguishing goods or

services certified by the applicant or an approved certifier from goods or services not so

44 Davidson, Monotti, Wiseman, Australian Intellectual Property Law (Cambridge University Press, 2015), 122 45Van Caenegem, Drahos and Cleary, ‘Provenance of Australian food products: is there a place for Geographical

Indications?’ (2015) RIRDC Publication No 15/060, 12 46Parish of Pokolbin Incorporated [2014] ATMO 98 (9 October 2014) 47Van Caenegem et al. (n.45) 12 48Van Caenegem, Cleary and Tréguier, ‘Local to Global: Provenance Branding and Farmer Co-operation for High

Value Export Markets’ (2016) RIRDC Publication No 16/068, 13 49Trade Marks Act 1995 (Cth), S 173 (2) (a) - (e) 50Ibid (2) (f) - (g) 51Ibid, S 177 (2) 52Ibid, S 175 (2) (a) and (b) 53Van Caenegem et al. (n.45) 12

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certified’.54 The Registrar, IP Australia, that takes a decision in this respect must take into

account whether the CTM is inherently adapted or by its use has become adapted to distinguish

its associated goods or services.55 In addition, the plural grounds for opposition that apply to a

registration of a trademark also hold for CTMs. These grounds specify that a trademark must

be rejected if it is likely to deceive or cause confusion by including a sign or connotation to

another trademark; and if it is substantially identical with, or deceptively similar to another

trademark for goods.56

Importantly, there is a separate provision that allows opposition on the basis that the CTM

‘contains or consists of a sign that is a GI for goods’ originating in an area other than the area

from which the CTM applicant's goods originate, if the ‘similar’ goods ‘would be likely to

deceive or cause confusion’.57 It is in this way that Australia envisages Article 22 (3) of the

TRIPS agreement. Yet, the wording of this provision should be noted because it only refers to

a sign that ‘is’ a GI and therefore not a sign that may be substantially identical or deceptively

similar to the GI. The consequences of such a distinction is demonstrated in the Bavaria NV v

Bayerischer Brauerbund eV case58. The applicant’s wanted to register “Bavaria Holland” as a

trademark in relation to beer, which was opposed by the respondent who had GI rights in the

EU to “Bayerisches Bier”, translated to English as “Bavarian Beer”. The Court ruled that due

to the lack of identical sign between the applicant’s trademark and the respondent’s GI,

opposition on the ground that it consists or conflicts with the existing GI was not permissible.59

This case also highlighted that the courts in Australia are not strict in evaluating whether

consumers are likely to be misled or confused by the registration of a conflicting trademark to

a GI.60 The Judge rationalised that consumers would not ‘associate the trademark with the State

of Germany’ more than it’s connotation to a ‘European origin’.61 It is also noteworthy from the

wording of this provision under s 61 of the Trade Marks Act 1995 (Cth) that if the goods of the

CTM do actually originate in the same geographical area associated with the GI, it would not

be grounds for opposition.62

Apart from these two relevant distinctions, there are three main exceptions to the opposition of

a CTM on the ground that it consists of sign that is a GI. First, opposition or rejection of the

CTM does not extend to a GI that ceases to exist in the country of origin.63 Second, if the sign

was registered before 1 January 1996 (the date of implementation of Australia’s TRIPS

requirements) or before the GI was recognised in its country of origin then the rights of the

CTM are preserved.64 Third, the GI will fail if it consists of a word that ‘is a common English

word or term; and the [CTM] applicant has not used, and does not intend to use, the trade mark

in relation to the relevant goods in a way that is likely to deceive or confuse members of the

54Trade Marks Act 1995 (Cth), S 177 (1) 55Ibid, S 177 (2) (a) and (b) 56Ibid, S 41-44 57Ibid, S 61 (1) 58[2009] FCA 428 59Bavaria NV v Bayerischer Brauerbund eV [2009] FCA 428, para 182 60Van Caenegem et al. (n.48) 24 61Bavaria NV v Bayerischer Brauerbund eV (n.60), para 108 62Davidson et al. (n.44) 123; Trade Marks Act 1995 (Cth), S 61 (2) (a) 63Trade Marks Act 1995 (Cth), S 61 (2) (b) 64Ibid, (2) (c); Davidson et al. (n.44) 123

14

public as to the origin of the relevant goods.’65 It is relevant to note that the wording of this

provision does not refer to generic use, but parallels the TRIPS permitted exception to GI

protection if the term is ‘customary in common language as the common name for such

goods’.66 One example in Australia would be the EU’s GI for Feta. The CTM system would

however permit further qualification of this GI in order to establish distinctiveness, such as

“genuine feta made in Greece”.67 This approach ensures that any GI that is a common English

term, can coexist with other uses of the products by traders, if it has additional qualifiers.

Enforcement of GIs in Australia, under the CTM system is entrusted with the owners of the IP

from the date of registration.68 A registration of a CTM provides the ‘exclusive rights to use,

and to allow other persons to use, the certification trade mark’69 , usually in the form of

licensing. This right comes with it the obligation for the owners to monitor the market and

ensure that the approved users of the CTM are complying with the specification rules.70 Not to

mention, any use from unapproved users, which would be the most relevant case for foreign

owners of GIs that have registered CTMs in Australia. In this situation, the CTM right-holder

may bring an action against any unauthorised use in order to prevent or stop further abuse.71

Insofar as civil remedies are concerned, quite far reaching is the right to notify the Australian

Border Force for the protection against and seizure of imports that would infringe the CTM.72

Other civil remedies for such acts can come in the forms of injunctions or damages, but not in

criminal penalties.73

Wines

The second body of the Australian GI framework is a sui generis based system that only applies

to wines. This system is a direct result of Australia entering into the European Community-

Australia Wine Agreement (hereinafter EC-Australia Wine Agreement) in January 1994 that

was designed to provide mutual protection for the EU and Australia’s wine GIs and to

specifically give Australian winemakers greater access to the EU market.74 Prior to this

agreement, Australia faced challenges exporting wine to the EU, because there were no formal

GIs and the de facto “Australia” origin label was not recognised.75 Consequently, an amendment

to the Australian Wine and Brandy Corporation Act 198076 embodied these objectives whereby

65Trade Marks Act 1995 (Cth), S 61 (4) 66 TRIPS (n.25) Article 24.6 67Van Caenegem et al. (n.45) 13 68Trade Marks Act 1995 (Cth), S 20 (3) 69Ibid, S 171 70Australian Government, ‘Geographical Indications’ (IP Australia, 30 January 2019).

<https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-

trade-mark/geographical> accessed 3 March, 2019 71Ibid 72Trade Marks Act 1995 (Cth), S 131 73Ibid, S 126 (1) 74Stern and Fund, ‘The Australian System of Registration and Protection of Geographical Indications for Wines’

(2000) 5 Flinders Journal of Law Reform 39, 39 75 Friedman (n.42) 7 76Australian Wine and Brandy Corporation Amendment Act 1993, 16 Dec 1993

15

a GI committee was established to delineate the boundaries of Australian wine GIs and many

EU GIs were automatically protected as a result.77

Yet, due to an evolving political and economic environment, summarised by scholars78 as the

enlargement of the EU, strong Australian export success in the international market, lack of

satisfactory multilateral improvements in the Uruguay Round of WTO negotiations, and certain

matters not resolved in the 1994 Agreement, a second treaty of the Agreement between Australia

and the European Community on Trade in Wine 2009 (hereinafter Wine Agreement) was

negotiated. This imposed a range of new obligations on Australia to protect and recognise EU

wine-related GIs and traditional expressions.79 For instance, phase out dates of 12 month

duration for the prohibition of certain EU wine GI use in Australia were stipulated80, and only

certain traditional expressions under specific conditions, such as ‘ruby’ and ‘vintage’ were

agreed to.81 On the other hand, it also further improved access for Australian wine producers

on the EU market, through the EU’s recognition of 16 new Australian wine-making techniques,

and a standstill clause for which the EU could not introduce any new restrictive laws against

labelling requirements for Australian wines.82

As it stands today, the Wine Australia Act 2013 (Cth)83 provides the legislative framework for

the sui generis wine GI system. Any wine-maker or grower or their respective organisations

have the right to submit an application to the Geographical Indication Committee, whose

functions are to determine region boundaries in relation to GIs and to ultimately approve or

omit wine GIs in Australia.84 Various criteria apply, such as the amount of production of wine

per tonne, the area of wine grape vineyards, distinguishing attributes of the grape and area, and

relevant history.85 Similarly, the word or expression for the indication needs to satisfy certain

criteria of history, traditional use, level of recognition and appropriateness.86

Following this application, the Committee is obliged to publish a notice for the consideration

and consultation of the GI, which triggers the opposition process of two month duration.87 There

are two main grounds for opposition. The first relates to common use. Any person may object

on the basis that the proposed GI is used in Australia as the common name of a type or style of

wine, or is the name of a variety of grapes.88 The extent of this objection is illustrated in the

Winemakers' Federation of Australia v European Commission89 decision on the registration of

“Prosecco” as a GI in Australia. Considering, “Prosecco” was registered as a grape variety in

the EC-Australia Wine Agreement and that there was use of the term in such capacity in

77Rimmer, ‘The agreement between Australia and the European community on trade in wine 2009’ (2009)

Submission 7 to the joint standing committee on treaties, 21; Friedman (n.42) 7 78Rybak, ‘Explaining The European Community – Australia Wine trade agreement. Impact of national

preferences on a change of scene in trade politics’ (2012) 11 Tom 135, 136; Rimmer, (n.77) 79Rimmer, (n.77) 25 80Agreement between the European Community and Australia on trade in wine, 30 January 2009, Article 15 81Ibid, annex 12; Rimmer, (n.77) 25 82Ibid, Article 6, 11 and 21; Rimmer, (n.77) 26 83Registered 14 November 2017, Part VIB - ‘Protection of geographical indications and other terms’ 84Wine Australia Act 2013 (Cth), 40P and 40R 85Wine Australia Regulations 2018, Division 4, 57 (1) 86Ibid, 57 (6) 87Wine Australia Act 2013 (Cth), 40RA 88Wine Australia Regulations 2018, schedule 1 (2) 89[2013] ATMOGI 1 (22 November 2013)

16

Australia which predated the European Commission’s date of application for the GI, the

Registrar of Trademarks held that the word Prosecco was still a grape variety and therefore

could not be used as a GI in Australia.90

The second main ground for opposition focuses on the conflict of GIs with trademarks. The

Registrar of Trademarks, and not the Committee, is therefore the administrative body

responsible for the decision of whether the objection is or is not made out.91 A registered or

pending trademark owner may oppose the proposed GI because the trademark consists of a

word, expression or other indication that is ether identical to or is likely to cause confusion by

the proposed GI.92 If it is decided that this opposition is well made out, the only way the GI can

be registered is if the person who lodged the appeal agrees to its registration, or if the Registrar

recommends the Committee to determine it, regardless of its conflict. 93 This recommendation

may be based on the fact that the proposed GI was in use before the Trademark arose or if

having regard to any other international obligation, it is reasonable that the proposed GI still be

registered in Australia.94 This mechanism on the one hand, preserves the “first in time, first in

right” principle that is required by Article 17.2(4) of the Australia- United States Free Trade

Agreement and places emphasis on the trademark owner to protect their rights.95 On the other

hand, it allows the GI in only certain circumstances to coexist with the trademark, even if the

wine of the trademark does not originate in the region indicated by the GI; provided that a

statement on the label is included that makes void any confusion as to the wine's origin.96

The protection afforded to wine GIs is much stronger than for CTMs, outlined above. The

possibility of an imprisonment of up to 2 years in addition to fines, for the selling, exportation

or importation of wine with a false description or presentation, is one example of this

difference.97 It is considered ‘false’ if it includes; (a) the name or indication of a county in which

the wine did not originate; (b) a registered GI or translated GI in which the wine does not relate

to; (c) a registered traditional expression in which the wine is not related to, in a category with

and the expression is in a language related to the registration; or (d) if it is not in accordance

with any other provisions relate to the description and presentation of wine.98 This extends to

any registered GI, translation of an indication or traditional expression even if it is accompanied

by an expression such as “kind”, “type”, “style”, “imitation”, “method”, or any similar

expression.99 Other provisions also prohibit the selling, exportation or importation of wine that

include a misleading description and presentation or any other contravention to registered

90Ibid, paras 41 and 49 91Wine Australia Act 2013 (Cth), 40RC and D 92Ibid, 40RB 93Ibid, 40SA (3) and (4) 94Ibid, 40RC (3) 95Australia-United States Free Trade Agreement (AUSFTA), 18 May 2004; Battaglene, ‘The Australian wine

industry position on Geographical Indications’ (June 27 to 29, 2005) Presentation to the Worldwide

Symposium on Geographical Indications, 19; Friedman (n.42) 9 96Battaglene (n.95) 19 97Wine Australia Act 2013 (Cth), 40C 98Ibid, 40D (2) (a) - (e) 99Ibid, 40D (4)

17

conditions.100 Consequently, this protection level exceeds the basic requirements set out in

Article 23 (1) of TRIPS, due to the inclusion of traditional expressions.

European Union’s Geographical Indication Framework

Unlike Australia, the EU has long shown support for its high-quality local produce and

traditions through GIs. Some Member States (hereafter MS) had their own national GI regimes

from early on in the 20th century, specifically in France and the southern Mediterranean

countries.101 GIs in these regions often represented a source of ‘cultural pride’ that extended

beyond any economic need or legal concern for their use.102 Moreover, the Court of Justice of

the European Union (hereafter CJEU) from 1988, even permitted the protection of GIs as an

exception to the liberalisation of trade in the internal market by allowing countries to apply their

national GI rules against imported infringed goods from other MS.103 It recognised as a result

that free movement of goods within the internal market, based on the principle of mutual

recognition had to be weighed up against the protection of quality local products, misleading

consumers and reducing standardisation.104 Thus, culminating with the reform of the CAP in

1992 that focused on abolishing protectionist measures and boosting high quality agricultural

and foodstuff products for the increasingly competitive global market, the EU itself set about

harmonising the registration and protection of GIs.105 This harmonisation was conducted with

the purpose of deepening the credibility of GI products for consumers and ensuring fair

competition between GI producers.106

The EU GI legal framework subscribes to the Old World approach of a sui generis register-

based system that was modelled off existing national GI regimes.107 Sui generis rights are

protected by separate EU regulations for wine108, spirits109, agricultural products and

foodstuffs110, through two quality schemes. The Protected Designation of Origin (PDO) scheme

identifies product names that have the strongest link to their geographical place.111 In order to

qualify, every part of production, processing and preparation of the product must take place

within the given area, where its quality or characteristics are exclusively or essentially due to

the inherent natural and human factors of the geographical environment.112 The use of ‘natural’

100Ibid, 40E, 40F and 40G 101Gragnani, ‘The law of geographical indications in the EU’ (2012) 7 4 Journal of Intellectual Property Law &

Practice 271 102 Voyce, (n.38), 159 103C-298/87 Smanor [1988] ECR 4489. 104Gragnani, (n.101) 272 105Ibid; Friedman (n.42) 4 106Regulation (EU) 1151/2012, recital 20 107Friedman (n.42) 3 108For wines: Regulation (EU) No 1308/2013 supplemented by Regulation (EU) 2019/33 and EU implementing

Regulation (EU) 2019/34 for PDO and PGI applications. For aromatised wines: Regulation (EU) No

251/2014 109Regulation (EC) No 110/2008 110Regulation (EU) No 1151/2012 111European Commission, ‘Quality schemes explained’ (EC- Food, Farming, Fisheries) <

https://ec.europa.eu/info/food-farming-fisheries/food-safety-and-quality/certification/quality-labels/quality-

schemes-explained_en> accessed 5 March, 2019 112EUIPO, ‘Infringement of protected geographical indications for wine, spirits, agricultural products and

foodstuffs in the European Union’ (2016) EUIPO, 10

18

and ‘human’ factors indicate that a wide understanding of the geographical environment has

been adopted, in order to allow for a broad range of variables stemming from the climate to

traditional or technical skills. It is also important to note that a PDO for spirit drinks and

aromatised wines are not provided for in legislation, and can thus only apply for a Protected

Geographical Indication (PGI). This second scheme recognises and is intended to emphasise

the relationship of the geographical origin and the name of the product.113 Consequently,

qualification is less strict than a PDO. At least one aspect of the production, processing or

preparation must take place in the geographical area, whose reputation, quality or other

characteristic is attributable to the same area.114 For wine, EU regulation 1308/2013 provides

that a PGI must be produced in the specified geographical region and contain at least 85% of

grapes grown from there.115

The MS where the PDO or PGI is sought or where the producers are established is responsible

for scrutinising whether the application satisfies all relevant qualification criteria.116 The

obligation to hold a national opposition procedure that is adequately publicised and afforded

enough time for any natural or legal person with a legitimate interest to lodge their opposition

is required before lodging the approval with the European Commission.117 The European

Commission essentially double checks that the conditions of the PDO or PGI are met before

publishing it in the Official Journal of the European Union (OJEU).118 This publication triggers

a second opposition procedure where any MS, third country authority, natural, or legal persons

can object to the registration by declaring that the application infringes the criteria for

registration.119 If this objection is admissible, the Commission will conduct consultations

between the two conflicting parties. However if there is no opposition, then the PDO and PGIs

are registered in the OJEU and listed on their applicable databases.120

Interestingly, not only do third country authorities have opposition rights to the registration of

the EU GIs, but GIs originating from third countries can also be registered under the sui generis

system at the EU level.121 These registrations, lodged by either the GI seeker or authorities of a

third country, bypass the national level and apply directly to the European Commission.122 At

this stage, the same procedural checks of the EU’s internal GI applications are conducted. Café

de Colombia, Napa Valley (USA) and Pisco (Peru) are some examples of third country GIs that

have followed this application process successfully. However, it is not only through this process

that third country GIs become protected in the EU. Bilateral and multilateral FTAs, and even

wine preferential agreements, oblige the EU to protect the other Party’s GIs in a mutual way.123

113European Commission, (n.111) 114EUIPO, (n.112) 10 115Regulation (EU) No 1308/2013, Article 93 116Regulation (EU) 1151/2012, Article 49 (2) 117Ibid, Article 49 (3) 118Ibid, Article 49 (4) and 50 119Ibid, Article 51; for conditions or grounds for opposition see Article 10 120cf. DOOR for foodstuffs, E BACCHUS for wines, E SPIRITS DRINKS for spirits and the File of Aromatised

Wines. 121EUIPO, (n.112) 10 122Regulation (EU) 1151/2012, Article 49 (5) 123 EUIPO, (n.112) 10

19

This is the case for all of the concluded EU’s new generation FTAs124, with the upcoming

addition of the EU-Australia FTA. The most recent EU agreement with Japan, obliges the EU

to protect 48 Japanese agricultural GIs, and 8 for wines and spirits. Japan on the other end, must

protect respectively 72 and 145 GIs from the EU.125

The protection provided to all of the GIs that the EU recognises, is comparatively a lot stronger

than Australia. It targets not only ‘direct’ but ‘indirect commercial use of a registered name’

for comparable products and the exploitation of a protected name’s reputation.126 In addition to

that, it protects against any ‘misuse, imitation, or evocation, even if the true origin of the

product is indicated or if the protected name is translated, transcribed, transliterated, or

accompanied by’ additional qualifiers, such as “type” or “method”.127 This level extends to all

products, thereby exceeding its international commitment of dual minimum standards under

TRIPS. Moreover, ‘any other false or misleading indication as to the provenance, origin,

nature or essential qualities of the product’ such as the inclusion on a package, is prohibited.128

This protection is vested into the exclusive rights of the PDO or PGI users, who can prevent

producers, outside the designated geographical area or whose product does not meet the specific

requirements, to use the name.129 As a result, owners of GIs are able to describe their products

and benefit from the added value they can derive from the market when there is no free-riding.

The broad scope of this protection is demonstrated by the GIs relationship to trademarks. First,

any registration of a trademark that would violate the prohibitions of a GI and falls after the

date of the MS’ submission to register the GI with the European Commission must be

refused.130 Second, the registration of a GI that conflicts with a trademark, that has been

registered or is in the process of EU application before a MS’ GI submission date to the

European Commission, must also be granted and provided protection for in parallel with the

existing trademark.131 The GI will essentially coexist with the trademark in this situation, where

the trademark is exempt from infringing any GI prohibitions. The only exceptions when a GI

would not be registered, is if the trademark in question would mislead the consumer to the true

identity of the GI due to its reputation, renown and length of time it has been used.132

Consequently, trademark rights and GI rights, that both prevent others from using its registered

mark or name, are not put on equal footing in the EU. Instead, they are systematically tipped to

facilitate GI rights, especially in a standard procedure where the trademark does not fulfil the

stringent conditions that could impede the registration of the GI.

Moreover, the EU also guarantees a high level of protection against GIs becoming generic.133

Once a GI is registered, it will never be able to be considered as a generic term for its product

124See current list at: European Commission, (n.14) 125EU-Japan EPA, (n.34) annex 14-B, 1-41 126Regulation (EU) 1151/2012, Article 13 (1) (a); For category specific application cf. for wine: Regulation (EU)

No 1308/2013, Article 103; for aromotised wine: Regulation (EU) No 251/2014, Article 20; for spirits:

Regulation (EC) No 110/2008, Article 16 127Ibid, (b); Ibid 128Ibid, (c); Ibid 129Gragnani, (n.101) 275 130Regulation (EU) 1151/2012, Article 14 (1) 131Ibid, Article 14 (2) 132Ibid, Article 6 (4) 133Ibid, Article 13 (2)

20

again, because it is only possible to prove generic use through an opposition of a GI before the

Commission has registered it, and protection is definitive ipso facto of registration.134 This is

even the case for when the registered GI has become the common name for the category of the

product within the country of origin.135 The motivation for this level of protection is due to the

fact that GIs as an IP, are more vulnerable to becoming generic because they grant exclusive

rights to a collective of producers, and not just a single commercial entity.136 Consequently, a

high standard of protection is considered ‘fatal’ in the EU, because any misuse of the GI term

could make it no longer function as an indication of the geographical origin, which is the

primary reason for registering it in the first place.137

Nonetheless, the crucial component of having this high level of GI protection in the EU, is the

ability to enforce it. The Regulations governing the quality GI schemes provide that MS are

responsible for controlling all GI products produced and marketed in their territory, regardless

of whether the production occurs on their territory.138 On the production level, control measures

require MS to verify that the GI product is complying with its relevant specifications or

procedures.139 Similarly, controls on the market level require confirmation that the product is

also complying with its specifications even after being placed on the market. This obliges MS

to monitor registered names against any misuse, imitation, evocation or misleading practices ex

officio.140

More generally, MS’ authorities must also take appropriate ‘judicial steps to prevent or stop

unlawful use’ of protected GI names.141 The EU’s GI Regulations however, do not specify any

sanction against infringements, as these are the respective competence of MS. Even though

most MS do treat GI infringement in their penal systems by sanctioning fines or processing

prohibitions, lack of concrete standards on control measures has meant that there is a large

degree of fragmentation throughout the MS in identifying infringements and bringing these

cases before a court.142 This is particularly relevant in the context of infringements taking place

in a different MS. Despite the creation of information and alert networks143 to coordinate at the

EU level, this fragmentation has been one of the main critiques for achieving proper and

thorough enforcement of GI protection.144

134Ibid, Article 10 (d) 135Gragnani, (n.101) 275 136Dev Gangjee, ‘Genericide: the death of a Geographical Indication?’ in Research Handbook on Intellectual

Property and Geographical Indications (Edward Elgar, 2016) 508, 510 137Ibid, 509 138EUIPO, (n.112) 18 139Ibid 140Ibid 141Regulation (EU) 1151/2012, Article 13 (3) 142EUIPO, (n.112) 12 143Cf. European Commission’s European Food Fraud Network and the Rapid Alert System for Food and Feed

(RASFF) 144 EUIPO, (n.112) 12

21

Chapter 2

Underlying interests and demands for Geographical Indications in

the EU-Australia FTA

The previous chapter provided a basis of the EU and Australia’s existing GI legislative

frameworks. This chapter will build on this foundation by focusing on each party’s underlying

interests and demands for the GI chapter in the EU-Australia FTA. This analysis thus helps to

paint a broader picture for determining the main challenges and potential points of convergence

for the negotiations that will be discussed in the proceeding chapters.

European Union’s Geographical Indication interests and demands

Interests

A satisfactory GI chapter is considered a ‘must have’ for the EU’s Global Europe new

generation FTAs.145 For the EU-Australia FTA in particular, the EU has three main areas of

interest. First, from a political perspective, the EU-Australia FTA provides a window of

opportunity for the EU to advance it’s GI interests to Australia following the failure of the

Trans-Pacific Partnership (TPP) to take effect after the withdrawal of the United States in

January 2017.146 This could contribute to further weakening the United States’ influence of GIs

in the Asia-Pacific region, which as a result of the TPP stood at odds to the EU’s approach by

emphasising processes of opposition, revocation, generic names, the requirement to register GIs

as trademarks and to prioritise trademarks over GIs.147 After all, the EU’s approach to GIs has

been exported to almost all of the previous TTP member States through the conclusion of

bilateral FTAs.148 Australia and New Zealand are thus the only remaining two countries that

have yet to conclude one. The EU-Australia FTA would therefore complete the EU’s objective

of strengthening its presence in the Asia-Pacific region that was launched in the 2015 Trade for

All trade and investment strategy.149

Second, from a cultural perspective, protection of GIs in Australia serve as an important tool to

uphold the EU’s long standing traditions, culture, and connections between producers.150 Many

MS have developed comparative advantages and strong reputations for regional high-end,

specialised, quality goods.151 This is perceived by consumers, not only in Australia, but

145DG AGRI, (n.33) 8–9; Englehart, ‘Geographical Indications Under Recent EU Trade Agreements’ (2015) 46

IIC 781, 783; European Commission, (n.12) 146European Parliamentary Research Service, ‘From TPP to new trade arrangements in the Asia-Pacific region’

(May 2017) European Parliament Brief PE 603.953, 1 147Moir, ‘Geographical Indications: sifting the latest evidence’, (Lecture presented in Canberra, 7 December

2018),<http://politicsir.cass.anu.edu.au/sites/default/files/docs/2019/3/2018_12_07_Canberra_SiftingEviden

ce_Moir_slides-notes.pdf> accessed 7 April, 2019 148See for instance, CETA, EU-Chile Association, EU-Japan FTA, EU-Mexico GA, EU-Singapore FTA, EU-

Vietnam FTA 149European Commission, (n.15) 31 150cf. Addor and Grazioli, ‘Geographical Indications Beyond Wine and Spirits: A Roadmap for a Better

Protection for Geographical Indications in WTO/TRIPS Agreement’ (2002) 5 Journal of World Intellectual

Property 865; Coombe, ‘Legal Claims to Culture in and against the Market: Neoliberalism and the Global

Proliferation of Meaningful Difference’ (2005) Law, Culture and the Humanities 35; Gutierrez, (n.20) 11 151Gutierrez, (n.20) 38

22

throughout the world.152 The EU has thus a crucial need to protect these regional reputations

and national cultural identities through GIs in order for it to remain competitive in international

trade. Considering the FTA is negotiated under the banner of the EU, who is increasingly

committed to representing itself in external relations as a single unified personality, and not an

entity of 28 individual and competing countries, this cultural interest for GI protection in

Australia is further enhanced.153

Third, from an economic perspective, high level GI provisions in the FTA will contribute to

reducing market access barriers for EU exports, which as it stands today is relatively high

compared to the preferential treatment Australia gives to its other trading partners.154 In fact,

the EU is estimated to gain 33.3% greater Australian market access by concluding the FTA.155

One of these major barriers nonetheless, is the abuse and imitation of EU GIs on the Australian

market, especially in the case for food products.156 There is no specific data on the cost of such

abuse to EU producers, however studies have found that within the EU, the value of GI

infringing products was approximately €4.3 billion or 9% of the EU GI product market.157The

rationale for this is because imitated GIs prevent GI producers from profiting on their demand

for higher prices. An external study made by AND International found that the worldwide sales

value of EU GIs was estimated to be € 54.3 billion, in which 22% represented GI products

exported outside the EU.158 It was also estimated that GI products were sold at a rate of 2.23

times higher than the comparable non-GI product on the international market.159 This is due to

the impact of information and reputation. If only producers know the differences in quality

between two comparable products, the goods are more likely to sell at the same price and thus

high quality goods are driven out of the market.160 Yet, if reputation standards are achieved and

are indicated to consumers through a distinctive sign, the willingness of consumers to pay the

premium price increases.161 Thus, concluding GI provisions in the EU-Australia FTA that

prevent Australian producers from free-riding on EU GI product reputations, serves the EU’s

goal of protecting a GI’s capability of benefiting from investment in quality goods so that more

GIs have the incentive to export to the Australian market.

152Ibid 153Since the Treaty of Lisbon, the EU has pledged “visibility, coherence and consistency” with regard to its

external relations; Gutierrez, (n.20), 39 154 European Parliamentary Research Service, ‘EU-Australia free trade agreement, Moving towards the launch of

talks’ (2017) Briefing International Agreements in Progress PE 608.757, 3; European Commission, ‘Impact

Assessment’ Commission Staff Working Document SWD(2017) 293 final, 21 155 Ibid, European Commission 156European Commission, ‘EU-Australia and EU-New Zealand free trade agreements’ (2016) Inception Impact

Assessment <http://ec.europa.eu/smart-

regulation/roadmaps/docs/2015_trade_040_aus_nz_trade_agreement_en.pdf> 157 EUIPO, (n.112) 7 158AND International and European Commission, ‘Value of production of agricultural products and foodstuffs,

wines, aromatised wines and spirits protected by a geographical indication (GI)’ (2012) Final report

<https://ec.europa.eu/agriculture/sites/agriculture/files/external-studies/2012/value-gi/final-report_en.pdf> 159Ibid 160 EUIPO, (n.112) 13 161Bramley, Biénabe, Kirsten, ‘The Economics of Geographical Indications: Towards a Conceptual Framework

for Geographical Indication Research in Developing Countries’ in The Economics Of Intellectual Property

(WIPO, 2009) 109, 114

23

Demands

Given these important interests, the EU demands minimum requirements of Australia in the

FTA to achieve its goals. First, it seeks the establishment of a list of EU GIs that are to be

protected directly and indefinitely in Australia from the entry into force of the FTA.162 This was

achieved in the EU-Japan EPA in Articles 14.22 (3) and 14.24, however only after the respective

parties conduct an examination of the list and a completion of an opposition procedure.

Paragraphs 3 and 4 of the procedures section in the textual proposal also require protection from

a yet-to-be specified GI list.163 The main benefit of this list is that GIs are protected ipso facto

of the agreement, ‘regardless of whether it qualifies as an indication of origin’ under Australia’s

current legislation.164 It also means that it is not generic.165 Importantly, the EU GI list typically

only covers a small proportion of the GIs registered under the PDO and PGI schemes.166 The

short list is a result of negotiations, where only those that are likely to spur on ‘economic interest

or potential development’ in the partner State is likely to be proposed.167 All other GIs will thus

have to go through the normal procedure in each respective jurisdiction, without receiving

special treatment from the FTA. It is for this reason that the EU’s textual proposal is very

process-orientated and requires a provision to amend and add to the GI list.168

Second, although the textual proposal does not define the scope of geographical indications to

include strong level protection for agricultural food products, the EU is likely to require this

standard. The textual proposal implies this with the inclusion of the four main GI Regulations

in the Legislation of the Parties section of Annex A.169 Given Australia already implements the

minimum standards of TRIPS, the main goal of the EU’s negotiations with Australia is to extend

‘the protection granted by Art. 23 TRIPS to products other than wines and spirits’.170 This

entails granting ‘protection against acts that may mislead the public as to the origin of the

product concerned and acts of unfair competition’ as required by Article 22 of TRIPS, but also

additional protection against deception and confusion.171 Delocalising terms of ‘‘kind’’, ‘‘type’’

or ‘‘style’’ would not be tolerated as a result, as these portray the product to be originating in a

place that is not identified by the GI.172 Only in this level of protection are GIs considered

secured against the burden of proof for consumer confusion or deception in court, which is

difficult to demonstrate in any jurisdiction, let alone a foreign one.173

162DG AGRI, ( n 33) 8 163‘textual proposal’, (n.31) 164Heath, ‘Geographical indications: international, bilateral and regional agreements’ in Heath et al. (eds) New

frontiers of intellectual property Law: IP and cultural heritage—geographical indications—enforcement—

overprotection (Hart Publishing, Oxford, 2005) 97, 124 165Englehart, (n.145) 784 166The EUIPO database contained more than 4,800 protected GIs as of 2016, whereas the EU-Japan EPA

includes just over 200 EU GIs. 167DG AGRI, ( n 33) 8 168‘textual proposal’ (n.31), Article X.33, 16 169cf. Regulation (EU) No 1151/2012, Regulation (EU) No 1308/2013, Regulation (EC) No 110/2008 and

Regulation (EU) No 251/2014 170DG AGRI, (n.33) 8 171Englehart, (n.145) 784 172Ibid 173Ibid

24

Third, the EU calls for the co-existence of GIs with prior trademarks if they were registered in

good faith.174 The only justification for the EU or Australia to refuse the protection of the other’s

GI on the grounds of a conflicting trademark is if the GI is likely to mislead consumers as to

the true identity of the product and the trademark has been renown and reputable for a length

of time.175 This requirement implements the established case law of the WTO, which recognised

that co-existence is sufficiently constrained to qualify as a ‘limited exception’ to trademarks

rights under the meaning of Article 17 of TRIPS.176 Nonetheless, in the EU-Japan EPA, the EU

was only able to receive an acknowledgement from Japan that a prior existing conflicting

trademark does not completely preclude the protection of a subsequent GI.177 This implies that

Japan will be less likely to grant GIs under these circumstances but does not object to the

common practice of trademark and GI coexistence in the EU.

Fourth, it is extremely likely that the EU will endeavour to phase out the prior use of

geographical names that originated in the EU for the description of specific products in

Australia.178 This is particularly relevant for product names that are claimed to be generic or are

registered as trademarks in Australia. These specific generic names have not been specified yet

by the EU given the GI list has not been drafted nor provided for in the textual proposal. Even

so, the EU is likely to push for a similar set of GIs included in the ‘claw back’ list that was

proposed by the EU already in the context of the Doha WTO negotiations in 2003.179 Although

many wines and spirits names were clawed back as a result of the EC-Australia Wine

Agreement, such as Champagne and Cognac, the food product names on the list such as Feta,

Prosciutto and Mozzarella have strong historical roots in Australia from European emigrates

manufacturing their old familiar products under the same names.180

Fifth, the EU requires the enforcement of GI protection in the EU-Australia FTA to be through

an administrative body to prevent or stop unlawful use of GIs, even at the request of interested

parties.181 That is, not through private parties or the holders of the GI. The EU-Japan EPA for

instance obliges both the EU and Japan to apply ex officio measures by the competent

authorities.182 This demand as a result, takes into account the GI exporter’s burden of

monitoring the Australian market and taking legal action through its court system.183 It also

goes hand in hand with the Right of Use provision in the textual proposal.184 The EU’s approach

to persons who are legally able to use the GI product label is any operator who is compliant

with the corresponding product specification.185 This scope was also achieved in the EU-Japan

174‘textual proposal’ (n.31), Article X.36 (5), 17 175Ibid, Article X.36 (6), 17 176EC – Trademarks and Geographical Indications (US) (2005), WT/DS174/R and (Australia) (2005)

WT/DS290/R. This ruling will be elaborated on in the fourth chapter. 177EU-Japan EPA (n.34) Article 14.27 (4) 178Englehart, (n.145) 785 179European Commission Press Release, ‘WTO Talks: EU Steps Up Bid for Better Protection for Regional

Quality Products’ (IP/03/1178) 28 August 2003 <http://europa.eu/rapid/press-release_IP-03-

1178_en.htm?locale=en> 180Englehart, (n.145) 785; For the list: European Commission (n.179) 181‘textual proposal’ (n.31) Article X.37, 18 182EU-Japan EPA (n.34) Article 14.28 183Englehart, (n.145), 786 184‘textual proposal’ (n.31) Article X.35 (1), 17 185Ibid

25

EPA in Article 14.26. It is designed to avoid problems associated with EU GI producers having

to obtain a license, be a member of an entity or a part of a producers association in Australia

that could be ‘confusing’, ‘time consuming’ or ‘costly’.186

Lastly, the EU is requiring a joint working body to oversee issues arising from product

specification as well as the functioning and implementation of the GI chapter provisions.187

This parallels the EU’s objective to ensure ongoing co-operation and dialogue.188 In the context

of establishing comprehensive rules and procedures between the EU and Australia for in

particular, a registration and control of GIs and an opposition procedure, this joint working body

is a natural extension to the commitments of mutual development and decision-making.

Australia’s Geographical Indication interests and demands

Interests

Unlike the EU, Australia does not have strong traditional interests and cultural values attached

to GIs. In fact, Australians, particularly agricultural producers, are unsympathetic to the

European’s cultural claim to them.189 They argue that even the most rare processing techniques

and growing methods have been copied, transposed and appreciated in Australia over a long

period in history.190 Australia rather views GIs as pure commodities that only advance the EU’s

trade interests and ultimately reduce competitive behaviour.191 This attitude has been consistent

in Australia since the beginning of negotiations on the EC-Australia Wine Agreement in 1994.

The Australian Government at the time believed a GI system was merely a reformed extension

of the EU’s over-regulated, protectionist CAP that posed an obstacle to liberalised trade.192

The fact that the EC-Australia Wine Agreement was concluded and even later renewed

nonetheless, suggests that Australia’s interest for concluding a GI chapter in the EU-Australia

FTA might be thus limited to the economic prospects that a closer relationship to the EU will

bring. This is because the trade incentives for signing the Wine Agreements were worthwhile.

The first agreement launched Australia into the leading position of extra-EU wine suppliers.193

Additionally, the latter agreement accounted for almost 50% of Australia’s wine exports in

2007-2008.194Furthering international trade relations with the EU could thus be beneficial to

Australia. It is Australia’s second largest trading partner next to China and the largest source of

foreign direct and indirect investment.195 Perhaps for this reason, Australia has stated that it is

186Englehart, (n.145), 787; DG AGRI, (n.33) 9 187‘textual proposal’ (n.31) Article X.38, 19 188DG AGRI, (n.33) 9 189Voyce, (n.38) 160 190Van Caenegem, ‘Registered Geographical Indications: Between Intellectual Property and Rural Policy - Part I’

(2003) 6 Journal of World Intellectual Property 699, 710 cited from Voyce, (n.38) 160 191Ibid, 161; Perspective sponsored by the Australian dairy industry in: Gallagher, ‘Geographical Perspectives

and International Trade-Industry Perspectives’ (Worldwide Symposium on Geographical Indications, San

Francisco, 9-11 July 2003) WIPO/GEO/SFO/03/17, 12 192Drahos, ‘Sunshine in a Bottle? Geographical Indications, the Australian Wine Industry, and the Promise of

Rural Development’ (2017) Geographical Indications at the Crossroads of Trade, Development, and Culture:

Focus on Asia-Pacific 259, 260 193Rybak, (n.78) 135 194Drahos, (n.192) 261 195Australian Government DFAT, ‘Australia-European Union Free Trade Agreement’

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/Pages/default.aspx > accessed, 9 April 2019, 4

26

‘open’ to the possibility of protecting GIs ‘in a mutually acceptable way that will include

consultation with agricultural and other stakeholders’196.

Yet to date, Australia’s stance on the extension of GIs, past wines and spirits, illustrates that

Australia is likely to have as its ultimate goal the prevention of such enlargement in the EU-

Australia FTA. This could be despite knowing full well that it is on the top of the EU’s GI

agenda. Since the Doha round of multilateral negotiations on the further protection of GIs

within the WTO under TRIPS, Australia has been vocally against providing Article 23 level of

protection to all products.197 In response to the arguments motivating the EC’s proposal for

extension of TRIPS standards for wine and spirits to other products198; namely that the current

system is inadequate and discriminates against products that are not wine or spirits, Australia

found both claims unjustified.199

First, it found that if its trademark systems that make the current TRIPS framework inadequate

because they have a lower requirement of distinctiveness than this is not the problem but rather

the reason why many foreign GIs in Australia can be protected.200 Moreover, if it is the costs

associated with applying for a GI in each country that are inadequate, then Australia finds that

the EC’s solution of an international GI register would not be cheaper as there would still be

separate fees in the recovery mechanism proposal.201 Further, if it is the lack of development

effects that makes the current system inadequate, then from the Australian view this is because

GIs are only market ‘tools’ to help set up markets. Therefore, they do not automatically provide

access to markets or instil quality into the product as these are fought for by investment and

strong efforts by producers.202 Australia even considers GIs to be a disincentive for producers

to innovate or increase quality on their products due to overprotective regulation and lack of

competition.203 This is in line with the argument advanced by other opponents of extending GIs.

Particularly, GIs are not to be considered a ‘real’ IP right, since they do not ‘reward invention,

creativity or innovation’204.

Second, Australia argued that even though there exists a difference in treatment on the level of

protection between wines and other products, this does not subsequently justify extension of GI

protection to the latter.205 Importantly, TRIPS members only agreed to enter into negotiations

aimed at increasing the level of protection of GIs for products that fall under Article 23 of

TRIPS, which is exclusively wines and spirits.206 Australia and other members are therefore

under no obligation to conduct negotiations that go beyond the scope of wine and spirits, even

196‘Australia – EU Free Trade Agreement’, (n.17), accessed, 9 April 2019 197Brink (n.37) 198WTO document: TN/IP/W/11 199Brink, (n.37) 2 200Ibid, 3 201Ibid, 4 202Ibid 203Ibid; Vernooij, ‘The Controversy on Geographical Indications: assessing the ongoing impasse during the

multilateral trade negotiations of the Doha Development Round’ (2008) Thesis for the Master programme

Public Policy and Human Development, Maastricht Graduate School of Governance, 28 204Ibid Vernooij, 16 205Brink, (n.37), 2 206TRIPS (n.25), Article 24 (1)

27

though the EC’s proposal covers all agricultural and foodstuff products.207 From the Australian

perspective, minimising discrimination could be equally achieved by reducing the high level of

protection for wines and spirits to the current level provided to all other products.

Australia’s participation in the US-led ‘joint proposal’ to the WTO208 for the implementation of

the mandate to establish a multilateral GI register under Article 23.4 of TRIPS further reflects

Australia’s interest against the extension of GIs. The lack of compromise between the EU and

these joint countries even in the multilateral negotiations of the Special Sessions of the Council

for TRIPS209 is therefore likely to be indicative of Australia’s present-day position in the EU-

Australia FTA.

Demands

Australia’s demands for the EU-Australia FTA GI chapter are not conveniently provided for in

a textual proposal, such as the one released by the EU. In addition, Australia is less transparent

than the EU on GI matters where the EU has been upfront with its intentions of advancing the

protection of GIs past the EU external border since even before TRIPS. For this reason,

Australia will be predisposed to the EU’s main demands of GI extension past wines and spirits

and the ‘claw-back’ of usurped EU GIs before arriving at the negotiating table. As a

consequence, Australia’s demands for the GI chapter are likely to be defensive in nature, in

order to minimise the possible negative impacts an EU-dominant GI agreement can have on

Australian producers and consumers. This attitude was confirmed on the multilateral level of

negotiations where Australia displayed ‘strong defensive GI interests’ because its immigration

background meant that many terms for products were being claimed by Europe through GIs.210

The main area where Australia is likely to demand a concession from the EU is retaining

important generic names.211 This means that the EU would agree to leave a certain number of

their GIs off the FTA list, so Australia could continue producing and labelling those products

under their generic names. For both food and wine products under this scheme, this would be

legally permitted under a similar provision in the EU-Australia FTA to Article 24.6 of TRIPS,

which excludes protection for GIs that are identical with the term customary in common

language of such a good or grape variety. It is also provided in Article 22 of the Wine

Agreement, and foreseen by Article 7 and a ground for opposition in the EU textual proposal.212

There are strong reasons why Australia is likely to insist on preserving certain generic terms.

Many perspectives from stakeholders have submitted their concerns for the possibility that the

use of common product names could become infringements in Australia. Dairy Australia were

concerned with not only the limits to international markets from an increasing protection of GIs

towards many generic cheese names but the implications of that extension on the Australian

207Vernooij, (n.203) 14 208WTO document: TN/IP/W/10 209 Chairman Ambassador Castillo (Honduras), ‘Multilateral System of Notification and Registration of

Geographical Indications For Wines And Spirits’ ( 20 December 2018) TN/IP/26, Doc No. 18-8067 210Brink (n.37) 1 211Moir, ‘Geographical Indications: An Assessment of EU Treaty Demands’ in Elijah et al. (n3) 135 212cf. ‘textual proposal’ (n.31) ANNEX [XX]-A, section B and ANNEX [XX]-B, 2 (e)

28

market.213 It argues that the popularity of certain dairy foods in Australia are not attributable to

the GI right holders but rather to Australian producers. Thus granting exclusive use of the term

to the GI owners privileges them unfairly and even amounts to expropriation.214 Moreover,

Dairy Australia disputes that banning generic names for dairy products in Australia is suitable,

because unlike wine, there are no appropriate alternative descriptions to clearly indicate the

content to the consumer.215 This position correlates with the perspective of the dairy industry in

Australia conducted from interviews in a recent study.216 It found that the majority of

respondents were concerned with renaming cheeses that would be difficult to describe to

consumers if Australia recognised generic cheese GIs from other countries.217 Seen in the

context of an industry valued at $787 million in export sales and $1.8 billion in domestic sales

from 2012-2013, the importance of maintaining generic cheese terms for Australian cheese

producers is indisputable.218

The National Farmers’ Federation concurs with this perspective. It argues that the EU’s attempt

to increase protection of GIs to food products that could result in the ban of Parmesan, Feta or

Prosciutto in Australia will not provide any advantages to Australian producers and therefore

systematically favours EU producers.219 Likewise, the Australian Food and Grocery Council

also finds GIs that restrict common food names to the exclusive production and use to one area

have the potential to disrupt Australia’s industry in the broader international food community.220

It believes that only multi-part terms should be protected in the EU-Australia FTA. That is, the

name of the product is considered generic while the region specified in the GI is afforded

protection.221

Similar concerns are also advanced by relevant stakeholders in the wine industry. Together they

place pressure on the Australian negotiators to prevent grape varieties from becoming protected

GIs. Wine Makers’ Federation of Australia first argues that the EU-FTA has a potential to

promote positive impacts from the EC-Australia Wine Agreement by further reducing tariffs

for wine.222 Nonetheless, in a second instance it warns that any GI negotiation with the EU must

defend the level of protection already agreed to in the Wine Agreement. Meaning no increase

213Dairy Australia did not publically submit their perspectives, but has previously expressed its position cf. Dairy

Australia, ‘Intellectual property arrangements – Issues paper, Productivity Commission’ (2015)

<https://www.pc.gov.au/__data/assets/pdf_file/0011/194519/sub038-intellectual-property.pdf>, 1-2 214Ibid 215Ibid 216Van Caenegem et al. (n.45) 217Ibid, 35-36 218Ibid, 36 219National Farmers Federation, ‘Submission to the Department of Foreign Affairs and Trade Inquiry into the

Free Trade Agreement Negotiations between Australia and the EU’ (2016)

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Documents/national-farmers-

federation-eufta-submission.PDF>, 6 220AFGC, ‘AFGC Submission: Australia European Union Trade Negotiations’ (2016)

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Documents/australian-food-and-

grocery-council-eufta-submission.PDF>, 7 221For clarity, this submission cites “Camembert de Normandie”, where Camembert from their perspective

should be free to use. 222Wine Makers’ Federation of Australia, ‘Submission on Australia-European Union Free Trade Agreement’

(2016) <https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Documents/winemakers-

federation-australia.pdf>, 1-4

29

in protection towards grape varieties, in particular Prosecco, and no additions to traditional

terms, as these are sensitive issues.223 Another noteworthy contribution from Regional

Development Australia also cautions against ‘quarantining the use of the name “Prosecco” to a

geographic area in Italy’ on behalf of the winemakers of the King Valley in North East

Victoria.224 It emphasises that this region is a leading producer in Australian Prosecco that is an

industry growing at the annual rate of 56%. Consequently, conceding to the EU’s request for a

Prosecco GI and replacing the variety to ‘Glera’ will cause significant damage to the growth of

the market.225

These submissions from the relevant stakeholders demonstrate that Australia has much riding

on the continual use of generic terms. Whether they be from agricultural and foodstuff industries

or from wine. Given their internal and external importance on markets to Australian producers

and consumers, it is very likely that Australia will be defensive against the EU’s demand of

phasing out the prior use of its GIs in Australia in the EU-Australia GI negotiations.

223Ibid, 5 224Regional Development Australia, Letter (2018)

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Documents/rda-prosecco-eufta-

submission.pdf> 225Ibid, 2

30

Chapter 3

Main challenges of Geographical Indication negotiations in the EU-

Australia FTA

The previous two chapters have looked at the EU and Australia’s GI legislative frameworks and

underlying intentions for the GI chapter in the EU-Australia FTA in isolation. This chapter will

take a deeper integrated look at the areas in which they differ to locate and discuss where the

main challenges to forming an agreement during the GI negotiations are likely to lie.

Agreeing to GI extension

One of the biggest challenges facing the EU and Australia when negotiating the GI provisions

in the FTA, is having to agree on the level of protection food product GIs will receive. It is a

contentious negotiation point because Australia will have to ultimately decide whether or not it

will concede to the EU’s demand of providing a higher level of protection to all products, not

only for wines and spirits. Otherwise, there would be no need to conclude an agreement on GIs,

as the current level of protection could be upheld.

From the EU’s perspective, the current level of protection in Australia for EU GIs is inadequate.

It allows for gross ‘abuse’ against many of the EU’s reputable products, which undermines the

producer’s reward for investment into quality and creates confusion for the consumer.226

Certainly in some cases, Australian law permits the legitimate use of EU GI names, on the basis

that Australian consumers do not attribute geographical significance to the sign or do not

connect the sign to the place of production origin.227 For this reason, the EU calls for automatic

strong-form protection to food product GIs as a necessary requirement in the FTA, in order to

stop abuses and prevent them from even developing in the first place. If Australia did agree to

an extension for the listed GIs, it would materialise in a number of positive outcomes for the

EU.

First, Australian consumer understanding of the GI or its reputation in the Australian market

would not be taken into account before having to provide protection against evocation,

deception and confusion, even if the true origin of the product is indicated, translated or

accompanied by qualifier terms, such as “like” or “style”.228 Subsequently, producers of EU

GIs would no longer have the burden of proof in demonstrating consumer deception within

Australian courts.229 Next, GIs included on the list would receive preferential treatment

compared to other GI applications in Australia. Passing only a preliminary objection

procedure230, the GIs would not be subject to a separate application for a CTM, where the ACCC

verifies the capability of the sign to distinguish itself from other products not certified and its

226European Commission (n.179) 227Handler, ‘Rethinking GI Extension’ in Dev Gangjee (ed.) (n.136) 148 228‘textual proposal’, (n.31) Article X.34 (1) (a), 16 229Englehart, (n.145) 784 230‘textual proposal’, (n.31), Article X.32 (3), 15

31

impact on competition and unfair practices.231 Consequently, current expensive costs of

enforcement and applications would be reduced, in accordance with the EU’s goals.232

The incentive narrative the EU promotes to persuade its bilateral trade partners, including the

likelihood of Australia, to agree to this strong-form protection for food products, is its economic

potential. That is, it would improve the efficiency of the Australian market by reducing

consumer’s search costs.233 In other words, they would make consumers quickly identify food

products they are confident contains added-value and quality, enabling them to make more

efficient and quicker purchasing decisions.234 Consequently, traders marketing a GI, whether in

Australia or the EU, will have incentives to continue guaranteeing the quality in their products

in order to maintain their market advantage.235 Third-party use would hence confuse the

consumer thereby increasing the consumers search costs as well as the GI owner’s investment

in quality.

The potential for dissension with Australia in this regard, is that this rationale only seems to

justify a level of protection against third parties communicating origin and quality.236

Australia’s current level of weak-form protection to food GIs that prevents misleading practice

and consumer deception, under the common law tort of passing off, as required by Article 22

of TRIPS, would thus be sufficient for the EU’s purposes. In addition, granting strong-form

protection to all products could just as likely lead to an increase in consumer’s search costs.237

Thus, prohibiting qualifiers to GI names, such as “like” or “style”, which are useful to describe

a product to Australian consumers, and replacing it with an inadequate alternative that is either

a generic or technical term may make it instead more difficult for consumers to ‘ascertain’ the

product they desire, especially if that is actually a product from a third party.238 Besides,

substitutes for food GIs do not exist, unlike for wine varieties. For instance, Australian dairy

producers have stated that “stretch curd pizza cheese” or “soft, white-mold cheese” would not

be marketable or identifiable as Mozzarella or Camembert respectively.239240 Furthermore, the

costs associated with developing these new terms or descriptions, re-labelling and marketing it

231Trade Marks Act 1995 (Cth), S 175 (2) (a) and (b) 232Vittori, ‘The International Debate on Geographical Indications (GIs): The Point of View of the Global

Coalition of GI Producers—oriGIn’ (2010) 13 2 The Journal of World Intellectual Property 304, 307-309;

One very contentious case over the delineation of a wine GI boundary in the Coonawarra region, costed in

estimate over $5 million for the payment of the entire legal and witness costs, Stern, ‘A history of

Australia’s wine Geographical Indications legislation’ in Dev Gangjee (ed.) (n.136) 289 233Handler, (n.227) 160 234Ibid; Addor and Grazioli, (n.150) 874 235Handler, (n.227) 160 236Handler, (n.227) 160-161 237Brink (n.37) 5; Török and Moir, ‘Understanding the real-world impact of GIs: A critical review of the

empirical economic literature’ (2018) 9 3 ANU Centre for European Studies Briefing Paper Series, 2 238Handler, (n.227) 163 239Van Caenegem et al. (n.45) 35 240It is important to note that these specific names are not likely to cause a problem, despite the view of the

Australian dairy industry. The EU is unlikely to seek protection for the generic component of multi-part GIs

it proposes for the list, since all of its new generation FTA’s including the EU-Japan EPA has followed this

suit. This means Australia would maintain the ability to use “Brie” from Brie de Moeux and “Camembert”

from Camembert de Normandie etc. cf. EU-Japan EPA, Annex 14-B

32

to consumers will also be transferred to consumers because producers will be forced to win

back their depleted margin through their sales.241

From the Australian view point therefore, it is necessary to question the EU’s narrative that

extending the protection level given to wines and spirits to all other products in Australia will

benefit the economy by helping consumers. To that end, Australia may argue that its current

level of protection as well as the CTM system is not only sufficient but also effective. After all,

the CTM system has successfully registered a number of popular, foreign food product GIs.242

These include inter alia, Parmigiano-Reggiano, Grana Padano, Ceylon tea from Sri Lanka and

Jamaica Blue Mountain Coffee that all stipulate that only the specified producers have the right

to use these terms in Australia.243 Moreover, even those GIs that are not registered as a CTM

can be protected against deceptive commercial use by relying on the common law tort of passing

off and section 18 of the Australian Consumer Law.244

Yet, whilst it may be the case that Australia’s best interest is to maintain the status quo of dual

minimum standards, like those already stipulated separately for food products and wines in

Articles 22 and 23 of TRIPS, this is not likely to be a feasible option. One reason is because

GIs have been considered “deal breakers” for the EU with respect to their preferential trade

agreements.245 Not to mention the reality facing Australia, is that many of the countries

Australia exports agricultural and food products to, have recently concluded GI chapters with

the EU in respective bilateral trade agreements. These all require some kind of strong-form

protection to food product GIs in addition to wine and spirits. This is most notable for the EU-

Japan EPA, where Japan is Australia’s second largest export market, as well as the EU-South

Korea FTA and the EU-Singapore FTA representing Australia’s respective fourth and ninth top

export markets.246 Consequently, Australian exports that include EU GIs in the product name,

even with “Australia” as an origin clearly marked, are not permitted on the markets of these

countries. To allow them would be in violation of the obligation to prevent in their territory the

use of a listed GI.247 More bilateral trade agreements between the EU and Australian export

partners that ensure strong-form protection to GIs, will require Australian producers to modify

their product labels in order to comply, regardless of whether they are obliged to do so for the

domestic market. This indirect influence has been raised as a concern by dairy producers in

particular.248

With this in mind, Australia may be more willing to concede on some of the point of differences

with the EU if extending GI protection to the level of wine and spirits to all products is seen as

an inevitable development in the international context. One option for Australia is to grant

241 Handler, (n.227) 163; Brink (n.37) 5 242In 2015, nearly a quarter of the 474 registered CTMs were agricultural products with 19 geographical marks,

excluding wines. Apart from two pending marks, that have now become registered, these CTMs were

exclusively from international registrations. Moir, (n.211) 130 243Brink (n.37) 3 244Competition and Consumer Act 2010 (Cth) 245Moir, (n.211) 122 246Australian Government DFAT, ‘Australia's trade in goods and services’ (2016) <https://dfat.gov.au/about-

us/publications/trade-investment/australias-trade-in-goods-and-services/Pages/australias-trade-in-goods-and-

services-2016.aspx> accessed 15 April 2019 247For reference, this obligation is Article 14.25 in the EU-Japan EPA (n.34) 248Van Caenegem et al. (n.45) 36

33

strong-form protection to all of the GIs on the list, except for certain products that are

particularly valuable on the domestic market. Those products would gain GI status but Australia

would only have to provide a higher level of protection, similar to Article 23 of TRIPS, after a

transitional period. This agreement was struck in the EU-Japan EPA for a number of products

that were already in use in Japan for at least five years. These included Asiago, Roquefort,

Comté, Gorgonzola, and Fontina for food products as well as Calvados, Münchener Bier,

Sauternes, Grappa, Porto and Scotch Whisky for wines and spirits.249 Significantly, Feta does

not form part of this group and thus Japan has an obligation to prevent its misuse on its territory

as of the entry into force of the EPA; 1 February 2019. The transitional period agreed to was

for a maximum of seven years on the condition that a ‘clear and visible indication of the true

geographical origin’ is provided.250 This option could be feasible for the EU and Australia given

the Wine Agreement included a similar transitional period for wines for the duration of

maximum 12 months, with the exception of Torkay of 10 years.251

An equally viable option is to grant strong-form protection to all GIs included on the list, but

insist on keeping weak-form protection for a certain set of products indefinitely. This means the

selected products would have GI rights against misleading practices, but producers would still

be able to use the names in Australia for their like products only when accompanied by

expressions such as “kind”, "type", "style" or "imitation". This method was decided between

the EU and Canada in CETA for instance.252 The applicable GIs agreed to included Asiago,

Feta, Fontina, Gorgonzola and Munster.253

Consequently, if either of these options were sought in the EU-Australia FTA it would mean

that the EU receives the protection level it demands of Australia for most of its GIs immediately,

except for a few more valuable and contentious ones that are either restricted to weak-form

protection or secured for a later date. Similarly, option one would appease Australia’s likely

economic concerns of re-branding to consumers by allowing enough time for producers to re-

market their goods. Option two would even be more in line with Australia’s probable legal and

economic doubts. In effect, despite the EU and Australia’s major differences on the issue of GI

extension, the challenge of agreeing to a mutually beneficial level of protection could be partly

mitigated by negotiating a version of these options.

Agreeing on a GI list

That being said, the next biggest challenge facing the EU and Australia when negotiating the

GI chapter for the FTA is actually agreeing on a GI list that is to be mutually and indefinitely

protected in each jurisdiction.254 The main reason for this is because it raises the contentious

issue of generic terms and whether they should be rightfully included on the list. What is at

stake, especially from the Australian context, is that the inclusion of such EU GIs that are

notwithstanding considered descriptive or common for many products on the Australian market

249EU-Japan EPA (n.34) Annex 14-B 250Ibid, Article 14.29 (1) and (2) 251Wine Agreement (n.80) Articles 15, 17 and 22 252EU-Canada Comprehensive Economic and Trade Agreement, provisionally in force 21 September 2017,

Article 20.21 (1) and (2) 253Ibid, Annex 20-A 254This is the first demand of the EU cf. DG AGRI, (n.33) 8

34

will automatically strip them of this status and prevent them from ever becoming generic

again.255

The exact contents of the EU’s proposed GI list is not publicly available due to ongoing

negotiations. However, given the formulation of this ‘claw back’ list, it is reasonable to expect

that many of the EU’s GI proposals for the EU-Australia FTA will be derived from it. Not to

mention any new GIs that have in the meantime become protected by the EU and are being

misused on the Australian market. Consequently, there are strong candidates that are likely to

be particularly controversial. For example, the EU’s PDO for Feta is not only on the claw-back

list but it is also used to describe the style of cheese in 12 of Australia’s registered trademarks.256

This presence indicates that Feta is a common English term in Australia, which therefore

permits the Australian authorities to fail any opposition to a trademark that consists of the term

Feta, so long as the indicated origin does not confuse or deceive members of the public.257

Additionally, the EU’s claw-back PDO for Parmigiano Reggiano is particularly problematic.

“Parmigiano Reggiano” is a registered GI CTM under the rightful Consorzio del Formaggio

Parmigiano Reggiano owners. However it’s translation “Parmesan” is registered under the

trademark “Sartori Parmesan”, a company based out of Wisconsin, and is currently pending

registration under the trademark “Kraft Parmesan Cheese”.258 The use of the translated GI, not

only in trademarks but on the branding of many Australian cheese products not-registered,

reveals on the one hand that the term is generic in Australia. On the other hand, it justifies the

EU’s need for its inclusion on the GI list with a strong-form level of protection.

A last example of a food GI that is troublesome, is the EU’s claw-back PDO for Prosciutto di

Parma. There are 20 in total trademarks registered in Australia that include the term

“Prosciutto”, attributed to two Australian producers and the rest to the Italian producers of the

PDO.259 Six of which include “Parma”, however these are only registered to the Italian

Consorzio Del Prosciutto Di Parma.260 Regardless, many products use “prosciutto” as a

description of the product with Australia as the marked origin. This generic use stands at odds

to the EU’s objective of phasing out generic terms261 and protecting them against not only

misleading and unfair competition practice, but also against any imitation and evocation.262

Relevant to evocation in this regard is the existence of the trademark “De Palma Prosciutto &

Small Goods” for the category of cold meat and charcuterie products.

Another controversial GI proposal by the EU is Prosecco. Prosecco is not on the EU’s claw-

back list, nor is it protected under the Wine Agreement (2009) as a GI.263 However, it has since

255Englehart, (n.145) 784 256Confirmed by a search of “Feta” and “Fetta” on the Australian database of Trademarks on 30 April 2019 cf. IP

Australia, ‘Australian Trademark search’ (Australian Government)

<https://search.ipaustralia.gov.au/trademarks/search/quick> 257Trade Marks Act 1995 (Cth), S 61 (4) 258Confirmed by a search of “Parmigiano Reggiano” and “Parmesan” on the Australian database of Trademarks

on 30 April 2019 cf. IP Australia, (n.256) 259Ibid “Prosciutto” 260Ibid “Parma” 261Englehart, (n.145) 785 262‘textual proposal’, (n.31) Article X.34 (1) 263Wine Agreement (n.80) annex II

35

been registered as a PDO by the EU at the request of Italy in 2009.264 Before this, it was

considered a grape variety and was even indicated as such under the first Wine Agreement in

1994.265 As a result, the grape variety is now referred to as “Glera” in the EU.266 Italy has

already indicated it wants a GI for Prosecco in the EU-Australia FTA.267 It is therefore

extremely likely that the EU will relay these demands or at least require it to be added to the

protected Wine Agreement GI list.

There are three main reasons why this is likely to be met with strong opposition in Australia.

First, the Registrar for Trademarks has already ruled that Prosecco was a grape variety in

Australia, four years before it was a listed GI in the EU.268 Consequently, it upheld the

Winemakers’ Federation of Australia’s objection to the European Commission's request that

Prosecco be listed on Australia’s register of protected GIs and other terms. In particular, it did

not find the European Commission’s claim that the production and promotion of Prosecco that

makes reference to the Italian language and culture is misleading to the PDO, to be well-

grounded.269 The obligation of producers to identify the Australian origin under label

regulations, and label the grape-growing region such as “King Valley” on all of their Prosecco

bottles attested to this argument.270 Moreover, the Registrar did not find it necessary to make a

recommendation to the Australian Geographical Indication Committee to still register Prosecco

as a GI, even though the objection was made out and it had the authority to do so in light of

Australia’s international commitments.271 The most noteworthy line of reasoning for this

decision referred to the fact that even up to 2009 in Italy the name was a grape variety and use

in this form in Australia pre-dated the European Commission’s regulatory change.272 Thus, the

exception to Australia’s TRIPS’ commitments on the basis that the GI is the customary name

of a grape variety was deemed to be applicable.

Second, Prosecco is not only used as grape variety in Australia, but it is also registered under

eight trademarks and awaiting examination for four more.273 Importantly, these are not only

from Italian producers but Australian wineries too, including the well-known Jacob’s Creek.

This means that there is a lot resting on the name Prosecco remaining a free to use grape variety

in Australia. Agreeing to the EU’s request that Prosecco be protected as a wine GI in Australia,

will thus affect Australian producers who use the term as a grape variety and style of wine, by

preventing them to do so and obliging them to change their brand, if it alludes to an origin that

is false. Such as even the presentation of Italian flag colours on any of the packaging or

264 Friedman, (n.42) 9 265Interestingly, “Prosecco di Conegliano (Valdobbiadene) with or without “superiore di Cartizze” was registered

as a GI. However, the 2009 wine agreement version removed Prosecco. 266Friedman, (n.42) 9 267Quoted from Proffessor Rimmer in Brown, ‘Bubbles and trouble ahead for Australian makers of prosecco’

(Brisbane Times, 2018) <https://www.brisbanetimes.com.au/national/queensland/bubbles-and-trouble-ahead-

for-australian-makers-of-prosecco-20180802-p4zv27.html> accessed 16 April 2010 268Federation of Australia v European Commission [2013] ATMOGI 1 (22 November 2013) 269Ibid, para 34 270Ibid, para 35 271Ibid, paras 39-40 272Ibid, para 43 273Confirmed by a search of “prosecco” on the Australian database of Trademarks on 30 April 2019 cf. IP

Australia, (n.256)

36

advertising material.274 It will also potentially affect those trademark owners who have rights

to the term. The costs alone for these negative impacts would therefore be enough for Australia

to defend their interests in the FTA negotiations.

Third, Australian is currently experiencing exceptional growth in the Prosecco industry. Not

only is it the fastest wine growing category in the domestic market275, with the main producer

Brown Brothers reporting a 50% annual growth rate in sales, but there are projections that sale

levels could double in the next few years.276 This would make the industry valued at $200

million.277 This economic prosperity coupled with strong pressure from key players in the

industry such as Wine Makers’ Federation of Australia and a coalition of winemakers from the

King Valley, who have vested interests in keeping Prosecco a grape variety278, illustrate that

Australia would be very unlikely not to oppose the EU’s Prosecco GI proposal.

In general, formulating a GI list that may potentially include many of these generic terms is

likely to be a major challenge in the FTA negotiations because agreeing to such EU proposals

ultimately conflicts with Australia’s basic interests. Refraining from accepting the EU’s claw-

back GIs allows Australia to maintain the current state of affairs. Producers can continue using

various common terms for their products without the need to even specify the geographical

origin or fear any misuse of the term. In this situation, they lawfully continue to fall under the

scope of the exception provided in Article 24.6 of TRIPS which stipulates that members do not

need to apply any TRIPS GI provisions if another member’s GI ‘is identical with the term

customary in common language as the common name for such goods’ or ‘grape variety’ in the

territory of that Member. Moreover, consumers can continue to buy products under the name

they recognise and understand. Agreeing to the inclusion of a set of generic terms in the FTA

GI list would therefore seem to only benefit the EU.

The profound nature of the EU’s demand of Australia in relation to generic names is best

illuminated by the fact that even a certain few of the claw-back terms were once themselves

controversially registered as GIs in the EU. For instance, the EU’s claim to Feta as a GI was a

result of a decade long controversial dispute brought by non-Greek Feta producers; Germany

and Denmark and supported by France and the United Kingdom in protest of the European

Commission’s generic list proposal, which did not include Feta.279 The CJEU’s ruling that

eventually confirmed the finding that Feta was not a commonly used expression for a type of

white cheese in brine, but indeed a designated cheese specifically attributable to a region in

Greece, was only a consequence of selecting specific types of evidence for generic status that

274‘textual proposal’ (n.31), Article X.34 (1) (b) 275Bailey, ‘Wine Australia for Australian Wine: Global Sparkling wine market trends’ (2018) <

https://www.awri.com.au/wp-content/uploads/2018/08/Overview-of-the-sparkling-wine-market-in-

Australia.pdf> accessed 16 April, 2019 276Winemakers’ Federation of Australia, ‘Prosecco – a variety of opportunity’, Media release on March 26, 2018,

<https://www.agw.org.au/assets/Uploads/Prosecco-showcase-Canberra-260318.pdf> accessed 16 April, 2019 277Ibid 278Cf. Wine Makers’ Federation of Australia, (n.222) 5; Regional Development Australia (n.224) 279C-465/02 and C-466/02 Federal Republic of Germany and Kingdom of Denmark v Commission of the

European Communities (GC) 25 October 2005; Dev Gangjee, (n.136) 516; European Commission, Proposal

for a Council Decision to Establish an Indicative, Non-Exhaustive List of Names of Agricultural Products

and Foodstuffs Considered Generic Names, as Referred to in Art. 3 Para 3 of Council Regulation (EEC) No.

2081/92, COM (96) 38 Final of 06/03/1996

37

systematically favoured Greek producers over external ones.280 Concerns of MS, such as those

characterised by Denmark that the ruling was a ‘legal nonsense’ and a ‘big setback’281 highlight

the lack of consensus over Feta being considered a GI even within the EU, who are perceived

as being ‘like-minded’ in their pursuit of GI protection.282 From this perspective, the EU’s

demand that Australia in effect transpose the CJEU’s ruling is far reaching. Similarly,

Parmesan’s status as a translation or variant of Italy’s PDO for Parmigiano Reggiano was also

contested in the EU with mainly Germany claiming its generic status, to no avail.283 Regardless

of the outcome, the contentious nature of these cases exemplify that Australia would have a

strong foot to stand on for refusing to convert its generic terms to protected GIs, just because

they have been considered as such by the EU.

One aspect that underlies the EU and Australia’s conflicting interests on generic terms that in

turn adds to the challenge of agreeing to a GI list, is how they test whether a term is or has

become generic. It needs to be noted that criteria for generic character and subsequent rules are

to be found in the laws of the jurisdiction where the GI is claimed to be generic.284 In other

words, not generally stipulated in a trade agreement. The EU on the one hand, provides strong

protection against ‘genericide’, which is testified by the incapability of products that are

registered in the EU as PDOs or PGIs subsequently becoming generic under EU law.285

Simultaneously, the EU has established a high threshold for determining generic terms.286 The

Feta case mentioned above, set the precedent that generic status would only be achieved in the

situation of where public opinion is relevant, ‘when there is in the relevant territory no

significant part of the public concerned that still considers the indication as a geographical

indication’.287 This ruling was confirmed by the CJEU in the Bavaria NV and Bavaria Italia Srl

v Bayerischer Brauerbund eV case288, stating that a name only becomes generic if the direct

link between the geographical origin and the specific quality, reputation or other characteristic

attributable to that product has disappeared.289 Consequently, the mere presence of a negligible

part of consumers who understand the term from its geographical roots is sufficient for the term

to become a GI and be protected from generic use.

Australia on the other hand has a fixed test for determining whether a term has become generic

under the Trade Marks Act 1995 (Cth), even though the word ‘generic’ is not explicitly used.

Section 87 (2) (a) asks whether the mark ‘consists of a sign that has become generally accepted

280Dev Gangjee, ‘Say Cheese! A Sharper Image of Generic Use Through the Lens of Feta’ (2007) 5 European

Intellectual Property Review, 11 281‘The EU Feta Debate Concludes’ Managing Intellectual Property - Weekly News (31 Oct 2005) in Ibid, 4 282Dev Gangjee, (n.136) 516 283C-132/05 Commission of the European Communities v Federal Republic of Germany [2008] ECR I-957; C-

66/00 Dante Bigi (Consorzio del Formaggio Parmigiano Reggiano, Third Party) Judgment of the Court of 25

June 2002, paras 15-17 284Audier, ‘Generic and Semi-Generic Denominations: Determination Criteria and Methods to Reduce their

Effects’ (2000) 22 AIDV Bulletin 29, 30; Lucatelli, ‘Appellations of Origin and Geographical Indications in

OECD Member Countries : Economic and Legal Implications’ (2000)

OM/AGR/APM/TD/WP(2000)15/FINAL, para 63 285 Regulation (EU) 1151/2012, Article 10 (d); Dev Gangjee, (n.136) 554 286Ibid, 526 287Commission Regulation (EC) No 1829/2002 of 14 October 2002 amending the Annex to Regulation (EC) No

1107/96 with regard to the name ‘Feta’, recital 23 288 C-343/07, Judgment of the Court (Fourth Chamber) of 2 July 2009 289Ibid, para 107

38

within the relevant trade as the sign that describes or is the name of an article, substance or

service’. If affirmative, this could result in the cancellation, removal or amendment of the

CTM.290 Given the evidence is industry-focused, the threshold to determine the generic status

of a term is considerably lower compared to the EU. This is because traders presumably

understand and command strong knowledge of relevant terms in their market or field.291

Inherent biases aside, the lack of consideration for the public’s perception of the term’s meaning

and use further demonstrates the low tipping point that is needed to trigger descriptive use in

Australia. When seen from a systemic viewpoint in which the general principle of trademark

law is to ensure no one trader or collective of traders can form a monopoly on a sign that is not

distinguished, Australia’s distinction from the EU’s sui generis consumer approach is

illuminated.292

It is important to highlight that the current differences between the EU and Australia on this

matter play an important role. Every GI proposal has to pass an opposition period, in which

both parties have generic use as a ground to oppose both the protection and registration of

GIs.293 Their divergence on generic tests will be thus relevant not only for approving the initial

GI list but also for any additions to the GI list in the future.294

Agreeing to procedural elements

The last main challenge facing the EU and Australia when negotiating the GI chapter for the

FTA is having to agree on various procedural elements that currently divide both parties. These

differences stem from the fact that Australia provides protection to GIs under a CTM system

and the EU a sui generis one. Despite CTMs commonly being referred to as a ‘viable

alternative’ to GI registration295, their inherent differences have diverging implications for the

right to use a GI and the enforcement of GIs.

The EU and Australia may find it challenging to agree on the current Right of Use provision in

the EU’s textual proposal. It states that ‘a name protected under this Agreement may be used

by any operator marketing a product which conforms to the corresponding specification.’296

The goal of this clause is to avoid administrative burden, because it then goes on to specify that

‘the use of such protected name shall not be subject to any registration of users or further

charges.’297 This provision reflects the EU’s public right approach to GIs as an extension of its

sui generis system. The rationale is that any producer who can satisfy the conditions that are

formulated and regulated by the State administrative authority should have the right to use and

enjoy the protection that it provides.298 In other words, GIs should not be limited to a specific

290Trade Marks Act 1995 (Cth), s 87 (1) 291Westgarth Lawyers, ‘From the Register to the Dictionary: The Treatment of Generic Trade Marks in Australia’

(Corrs Chambers, 28 April 2015) <https://www.corrs.com.au/publications/corrs-in-brief/from-the-register-to-

the-dictionary-the-treatment-of-generic-trade-marks-in-australia/> accessed 17 April 2019 292Dev Gangjee, (n.136), 527 293‘textual proposal’ (n.31) Annex [XX]-B (2) (e); Trade Marks Act 1995 (Cth), Section 61 (4); Regulation (EU)

No 1151/2012, Article 6 (1) 294‘textual proposal’ (n.31) Articles X.32 (3) and (4); X.33 2nd para. 295 Van Caenegem et al. (n.45) 12 296‘textual proposal’ (n.31), Article X.35 (1) 297Ibid, Article X.35 (2) 298Correa, ‘Protection of Geographical Indications in Caricom Countries’ (2002) Prepared for CARICOM.

<http://www.iadb.org/intal/intalcdi/PE/2009/03454.pdf>, 24

39

enterprise or association in the geographical area the GI originates from. To this end, the

freedom of all producers in the region to use the GI and enforce those rights against unlawful

use is preserved, which from the EU’s perspective helps to ensure ‘inclusive growth’ and rural

development.299 These objectives are specifically envisaged in the recitals of the EU Regulation

governing agricultural GIs.300

Given CTMs are private rights in Australia, agreeing to the EU’s proposal is likely to cause a

disruption in the negotiations. CTMs are private in the sense that both the property and

administration belong to an association or group of producers.301 These owners are obliged to

construct their own certification rules and criteria defining who will have the right to use their

CTM and procedures for complying to the product standard, unlike in the EU where this is the

responsibility for the State administrative authority.302 Since the emphasis of the certification

rules must be on the product’s distinctiveness rather than description, as a private right it should

not, in theory, interfere with another producer’s wish to merely indicate or brand the origin of

certain goods that come from the same place as the CTM.303 Even for wine GIs that fall under

a sui generis system, rules correlating locality and distinctiveness are not emphasized.304 Rather,

the delineation of grape boundaries lies at the heart of the system because this was the best way

to facilitate access to the EU market at the time.305 Consequently, the lack of concern of terroir

for both CTMs and wine GIs are fundamentally at odds with the EU’s understanding of how

GIs should link quality to geographical origin and regulate producers in a region. To this end,

the ongoing fees at each 10 year registration renewal306 for a CTM is an extra element that will

provoke the differences between the EU and Australia. The EU has foreseen this obstacle and

has therefore required in its textual proposal that ‘there shall be no fees related to the protection

of geographical indications under this Agreement.’307

Finally, the EU and Australia are likely to find difficulties in overcoming their differences on

who is responsible for enforcing GIs on the market. The EU intends on increasing the standard

of GI enforcement in Australia to level that of its own, by making it a requirement that

authorities carry out on their own initiative, administrative and judicial steps to prevent or stop

the unlawful use of GIs in Australia.308 This is because in Australia, the onus is on the owners

of the CTM to monitor its licensed members using the mark, as well as the market for

compliance with specification rules and any possible infringements.309 Any remedies that are

taken by the courts in the form of injunctions or damages, or even by the Australian Border

Force are thus only a result of the owners legal action and notification to the authorities,

299Ibid, 25 300Regulation (EU) No 1151/2012, pts 4, 5 301Correa, (n.298), 24 302Trade Marks Act 1995 (Cth), S 173 (2) 303Van Caenegem et al. (n.45) 12 304Drahos, (n.192) 264 305Ibid, 263 306Australian Government, (n.70) 307‘textual proposal’ (n.31) Article X.38 (8) 308Ibid, Article X. 37 and Annex [XX]-A, section B para 5 309Australian Government, (n.70)

40

respectively.310 This coincides with the principle that CTM’s are private property so by

extension the owners should have to bear the costs and burden of protecting it.

Consequently, it will be a far leap for Australia to agree to the EU’s proposal that the Australian

authorities must carry out enforcement of EU GIs on the pocket of the Australian tax payer.311

This is noteworthy considering the primary benefits of GIs do not go to the State or the public,

but to the producers who have a government-backed monopoly and privilege of preventing

other producers from tarnishing the reputation attributed to their product.312 To that end, general

differences on who should pay for such enforcement measures, or even wider costs for

registration and potential compensation to trademark holders, is likely to prove challenging for

the EU and Australia in the negotiations of these points in the FTA.

310Trade Marks Act 1995 (Cth), S 126 (1) and S 132 311Moir, (n.211) 133 312Ibid, 134

41

Chapter 4

Main potential points of convergence for Geographical Indications

in the EU-Australia FTA

The previous chapter identified the areas where the EU and Australia are likely to face

challenges in their GI negotiations for the FTA. In contrast, this chapter will focus on the

similarities between the EU and Australia to determine the main potential points of

convergence. Both the EU and Australia are committed to cooperative and transparent

negotiations to achieve mutually beneficial outcomes in a spirit of ambitious and

comprehensive rules-based trade mandates.313 This integrative negotiation approach conveys

that both parties will actively seek out these areas of convergence in order to not be hindered

by the various challenges that lay ahead.

GI relationship to trademarks

A main potential point of convergence between the EU and Australia for the GI chapter in the

FTA is the relationship of GIs to trademarks. This is not only in the sense that a registration of

a trademark must be refused if the application is submitted after the date that a GI is protected

in either territory, since this is already established in Australian and the EU’s legislation314 and

is a requirement of Article 24.5 of TRIPS315. It is also in the sense for the registration of a GI

that conflicts with an existing trademark for the same category of product.

This may seem surprising given the EU and Australia have different hierarchical approaches to

GIs and conflicting trademarks. The EU places the registration of a new GI on equal footing to

an existing trademark by allowing the former to be registered in parallel to the latter.316 This

coexistence exempts the trademark from the possible breaches of misuse, evocation or imitation

of the GI from applying. On the other side, it also prevents the trademark owner from exercising

its right of excluding illegitimate use of the mark. Australia in contrast preserves the “first in

time, first in right” principle.317 That is, the exclusive rights and ownership of a trademark is

protected from a subsequent registration of an identical or similar sign.318 This principle is a

result of registering GIs through a trademark system. A CTM GI must be rejected, like any other

trademark, for being ‘substantially identical with or deceptively similar to a trademark

registered by another person in respect of similar goods or closely related services’.319 It is also

the applied principle for registering GI wines in Australia. The Wine Australia Act 2013 (Cth)

313EU Council, (n.17); European Parliament, ‘Resolution of 25 February 2016 on the opening of FTA

negotiations with Australia and New Zealand’ (2015/2932(RSP)), Thursday 25 February 2016, C 35/136;

‘Australia – EU Free Trade Agreement’, (n.17) 314Australia: Trade Marks Act 1995 (Cth), S 61 (2) (c); EU: Regulation (EU) 1151/2012, Article 14 (1) 315In fact, the EU textual proposal requests the date to be the date of submission of an application for protection

of a GI, which will be the date of entry into force of the agreement, and the date of the transmission of a

request for a GI in the case of amendments or additions. 316Regulation (EU) 1151/2012, Article 14 (2) 317cf. Rothbury Wines Pty Ltd v Murray Tyrrell, Tyrrell's Vineyards Pty Ltd and Trevor Drayton [2008] ATMOGI

1. The Registrar determined that the GI for “Rothbury” was likely to cause confusion with the trademark

“Rothbury” and the expression “Rothbury Estate”. 318 Van Caenegem et al. (n.45) 64 319Trade Marks Act 1995 (Cth), S 44 (1)

42

lays down that registered owners of a registered, pending or non-registered trademark are

entitled to object to a proposed GI if ‘the trade mark consists of a word, expression or other

indication that is identical to the proposed GI’ and is ‘likely to cause confusion with that […]

indication’.320

A potential convergence on the possibility of registering a new GI that conflicts with a previous

trademark may be also unexpected given Australia raised complaints with the WTO already in

2003 against the EU’s Regulation of GIs321 over the legality of GI and trademark coexistence.322

Specifically, Australia argued that granting coexistence would be inconsistent with the EC’s

obligation under Article 22 of TRIPS; to provide the legal means for interested parties to prevent

misleading use or acts of unfair competition.323 The EC in response held that the coexistence

regime adequately balanced the two positive rights in GI and trademark law to use the contested

sign against the negative rights to prevent others from using it.324 It thus further claimed that a

trademark was an exception to the protection of a GI, just as a GI was a permitted limited

exception to trademarks rights under Article 17 of TRIPS.325 The Panel agreed with the EC that

the Regulation, though inconsistent with trademarks rights, was sufficiently constrained to

justify a “limited exception”.326 However, by implication the Panel’s recommendations also

confirmed Australia’s argument.327 Notably, unqualified coexistence without due regard to the

legitimate interests of the trademark owner is inconsistent with TRIPS.328 Consequently, the

EC’s implementation of the Panel’s decision is now envisaged by Article 6 (4) of Regulation

(EU) 1151/2012 that lays down exceptions for when a trademark can prevent a registration of

a GI.329

It is nonetheless due to these exceptions that the EU and Australia have the potential to

overcome their differences and agree on the relationship between new GIs and conflicting prior

trademarks in the FTA. Even though the EU will in majority of cases apply the procedure of

coexistence, it is obliged to derogate from this process when the trademark is endowed with a

special status. Namely, ‘in light of a trade mark’s reputation and renown and the length of time

it has been used’ the registration of the GI ‘would be liable to mislead the consumer as to the

true identity of the product’.330 The assumption is that a well-known trademark’s coexistence

320Wine Australia Act 2013 (Cth), Subdivision D, Article 40RB (1) - (4) 321Specifically, Council Regulation (EEC) No 2081/92 of 14 July 1992 on the protection of geographical

indications and designations of origin for agricultural products and foodstuffs. This is the predecessor of

current Regulation (EU) 1151/2012 on quality schemes for agricultural products and foodstuffs 322WTO, ‘DS290: European Communities — Protection of Trademarks and Geographical Indications for

Agricultural Products and Foodstuffs’ (WTO, February 2010) <

https://www.wto.org/english/tratop_e/dispu_e/cases_e/ds290_e.htm> 323Ibid 324Taubman, ‘Australia’s interests under TRIPS Dispute Settlement: Trade Negotiations by other means,

multilateral defence of domestic policy choice, or safeguarding market access?’ (2008) 9 Melbourne Journal

of International Law 217, 257 325WTO, Report of the Panel - European Communities – Protection Of Trademarks And Geographical

Indications For Agricultural Products And Foodstuffs, WT/DS290/R 15 March 2005, 142 326Ibid, 146 327Ibid, 167 328Ibid, 147-150 329For reference these exceptions are ‘in light of a trade mark’s reputation and renown and the length of time it

has been used’ 330Regulation (EU) 1151/2012, Article 6 (4)

43

with a new GI will either mislead or confuse the consumer, which stands at odds with the main

purpose of a registering a GI.

The meeting point with Australia is that Australia too provides by law, exceptions to its “first

in time, first in right” principle, permitting in certain situations coexistence between the two IP

marks. Section 44 (3) and (4) of the Trade Marks Act 1995 (Cth) empowers the Registrar, IP

Australia, to accept the application of a registration for a GI CTM that conflicts with a prior

identical or similar trademark, for three main reasons. First, it is satisfied there has been honest

concurrent use of the two marks. Second, if the applicant has continuously used the mark for a

period before the date of registration of the trademark, which would be particularly relevant for

foreign GIs. Third, if ‘because of other circumstances, it is proper to do so’.331 Through the

power vested in the Registrar to attach certain conditions or limitations to the applicant’s mark,

conflicts between a registered trademark and a GI is effectively regulated.332 This was the case

for the mark “Great Western”. The trademark was allowed to persist due to use in good faith

for the preceding 140 years, together with the GI, albeit under defined conditions including the

obligation to combine the GI with a brand name, not use the same colours of the trademark

branding, and to have smaller font size.333

Similarly, Article 40RC (3) of the Wine Australia Act 2013 (Cth) authorises the Registrar to

make a recommendation to the Geographical Indication Committee for the registration of a

conflicting GI if it is satisfied that given the circumstances, it is ‘reasonable’. The Act cites prior

use of the GI before the trademarks rights arose as reasonable, and specifically obliges the

Registrar ‘to have regard to Australia’s international obligations’.334 Consequently, in the event

that a wine GI is registered even though it conflicts with a registered or pending trademark, the

use of the trademark is excused from breaching GI offences if it describes or presents wine

which does not originate in the GI origin, is not likely to mislead and, correctly shows the true

origin of the product.335 Thus, these legal exceptions highlight that GIs will not always coexist

with conflicting trademarks in the EU context and GIs do not simply cede to preexisting

trademarks in the Australian context. By way of exception, the EU and Australia have the

potential to converge on this matter in the negotiations of the FTA.

This potential is highly probable given the EU has previously shown that it does not insist on

its own specific procedural order for the relationship between GIs and prior conflicting

trademarks in the party of its bilateral FTA partner. This is illustrated by the EU-Japan EPA.

Article 14.27 (4) merely states; ‘The Parties acknowledge that the existence of a prior

conflicting trademark in a Party would not completely preclude the protection under this

Agreement of a subsequent geographical indication for like goods in that Party.’ The use of the

term ‘acknowledge’ demonstrates that Japan is not obliged to register GIs in parallel with

existing trademarks. In addition, the inclusion of the almost word-for-word duplication of the

second part of TRIPS Article 24 (5), further reiterates Japan’s non-obligation to grant

331Trade Marks Act 1995 (Cth), S 44 (3) 332Van Caenegem et al. (n.48) 66 333This result was achieved without litigation. Stern, (n.232) 281-283 334 Wine Australia Act 2013 (Cth), Article 40RC (4) 335cf. Ibid, 40D (2) (a) – (e) for GI offenses. Drummond and Jouguelet. ‘First case on conflict between trade

mark and geographical indication’ (2009) 21 Australian Intellectual Property Law Bulletin 144, 146.

44

coexistence on this point. This Article specifies that the measures adopted to implement the

protection of GIs between the EU and Japan ‘shall not prejudice the eligibility for or the validity

of the registration of the trademark, or the right to use the trademark, on the basis that such a

trademark is identical with, or similar to, the geographical indication’.336 Consequently the

practical impact on Australia in merely “acknowledging” the coexistence procedure in the EU

is modest. The pitiful upshot being only that Australia would have to validate the WTO’s 2003

panel decision337 in a binding legal document.

The potential of the EU and Australia to establish a point of convergence on the relationship

between GIs and preexisting trademarks is also strong given that as it stands today ‘there do not

seem to exist any problematic trademarks’ on the Australian market.338 Excluding

notwithstanding, the use of common generic terms in certain trademarks and the registered

trademarks that belong to the appropriate owners of the GI, such as Asiago, Parma Ham or

Gorgonzola. This absence is significant considering the EU-Japan had a conflict on the EU’s

Parmigiano Reggiano PDO.339 As a result, there are no outstanding trademark owner interests

that the EU or Australia must defend in the negotiations, who could stand to lose their exclusive

market rights. However, this does not exclude any future interests of trademark owners who

could conflict with additions or amendments to the FTA GI list. In this context, the parties

should be wary of compensation for when trademarks rights have been ‘diluted’340, which for

Australian wine producers following the EC-Australia Wine Agreement was increased markets

access to the EU. Besides this aspect, Australia and the EU have within their grasp strong

potential to agree on the procedure of registering new GIs when they conflict with prior

trademarks.

Wine GIs

Another area where the EU and Australia have a potential point of convergence in the FTA

negotiations is over wine GIs. After all, Australia and the EU have had an agreement on the

bilateral trade of wine since 1994 with the signing of the EC-Australia Wine Agreement that

was later refreshed in 2009. These subsequent agreements have meant that for just short of 25

years Australia and the EU have had harmonised labelling, alcohol levels and blending rule

requirements as well as regulated wine-making practices to facilitate market imports.341

Additionally, wine GIs and traditional expressions are registered in both the EU and Australia

under sui generis systems that are granted strong-form protection. As the landmark case, La

Provence, demonstrates, this level of protection is taken seriously and interpreted strictly.342

The Federal Court of Australia found that even though “La Provence” was not a registered GI,

the fact that “Provence” was a well-known wine-making region of France in Australia, it was

used for the description and presentation of the wine’s origin, and that it was included in three

336EU-Japan EPA (n.34) Article 14.27 (5) 337Report of the WTO Panel (n.335) 142 338Moir, (n.147) accessed 25 April 2019; This claim was also confirmed by a search of the Australian database of

Trademarks on 25 April, 2019, cf. (n.256) 339EU-Japan EPA (n.34) Annex 14-B, 11 340Moir, ‘European Trade Treaties: Key Intellectual Property Demands’ (2015) 6 4 ANU Centre for European

Studies Briefing Paper Series, 27, 29 341Anderson, ‘Agriculture and Food Trade Policy’ in Drake-Brockman and Messerlin (n.19) 183 342Comité Interprofessionnel des Vins Côtes de Provence v Stuart Alexander Bryce [1996] FCA 742 (23 August

1996)

45

other registered GIs under the bilateral agreement, any bottles sold bearing this term would

constitute ‘a false description and presentation’.343

As it stands today the Australian wine GI register protects 893 of the EU’s wine GIs and the

EU protects just over 100 of Australia’s.344 Clearly these numbers drastically exceed the short-

listed GIs sought after by the EU in its bilateral FTAs, where for instance the most extensive

amount was 145 GIs for wines and spirits in the EU-Japan EPA.345 Therefore, it can be argued

that the EU and Australia already “converge” on the matter of wine GIs for the FTA, apart from

the status of Prosecco, analysed in the previous chapter. This means that despite interests of

amending the Wine Agreement to further reduce tariffs below the average 5% and straighten

out other technical standards346, the EU and Australia can choose to leave the Agreement in its

current form by integrating it into the FTA. The EU’s textual proposal has left room for this

integration, citing as its goal the need to ‘address the relationship between the [FTA] Agreement

and the existing EU- Australia Wine Agreement’.347 It is also the view shared by the Australian

wine industry, who does not want to see any stricter rules on labelling or presentation of wine,

such as the registration of the Champagne bottle shape for sparkling-wines.348

Besides saving time, the main advantages to keeping the status quo are that most contentious

issues concerning wine GIs are no longer problematic, such as generic terms. The impact on

wine producers using GI terms are also negligible since they have already had to re-market

many of the conflicting products, especially in Australia, when the EC-Australia Wine

Agreement was first signed. In addition, any amendments to the GI provisions of the Wine

Agreement can only add-value to the strong developed relationship between the EU and

Australia on trade in wines. These advantages did not exist for the EU-Japan EPA, where there

was pre-existing use of many common wines, such as Porto and Grappa. Strikingly, it has only

been the case in one other EU comprehensive bilateral FTA.349

Food GIs

The established convergence of wine GIs as a result of the Wine Agreements also has the

potential to function as an example for the protection of all other products in Australia. Namely,

the possibility of implementing a similar sui generis register for food products, which would

effectively minimise most of the current procedural differences of GI regulation between the

EU and Australia. The European Parliament has brought attention to this prospect by stating

that the Wine Agreement can be taken as a ‘benchmark’ ‘to ensure a high level of protection for

343Ibid, p18; Stern, (n.232) 265 344Wine Australia, ‘Register of Protected GIs and Other Terms’

<https://www.wineaustralia.com/labelling/register-of-protected-gis-and-other-terms> accessed 26 April

2019; Wine Agreement (n.80)Annex II, Part B 345EU-Japan EPA (n.34) annex 14-B, 1-41 346Australian Grape and Wine Authority, ‘Impact of tariffs on Australian wine in the European Union’ (2015)

<https://dfat.gov.au/trade/agreements/negotiations/aeufta/submissions/Documents/australian-grape-and-

wine-authority-eufta-submission.PDF>; Anderson, (n.341) 183 347‘textual proposal’ (n.31) 19 348Wine Makers’ Federation of Australia, (n.222) 349cf. CETA (n.252) Annex 30-B. It did not register any new GI wines, but rather amended the 1989 Alcoholic

Beverages Agreement and the 2003 Wines and Spirit Drinks Agreement on mainly procedural and pricing

requirements, not GIs. European Commission, ‘Wine: Bilateral agreements with third countries’ (Agriculture

and rural development) <https://ec.europa.eu/agriculture/wine/third-countries_en#za>

46

all GIs’.350 To what extent Australia can use its wine GI system as a successful model for

registering food GIs, nonetheless depends on many factors.

First of all, it is indisputable that the Wine Agreement which sparked Australia’s legislation of

a GI system contributed to much of the export-orientated success of the Australian wine industry

from the 1990s on. By agreeing to the EU’s numerous set of GIs and traditional expressions,

even those considered descriptive or generic terms, Australia was provided with substantial

access to the EU’s large and prosperous market. At the time, this market was remarkably

difficult to penetrate, given its policies were protectionist in nature through the forms of tariffs,

levies, anti-dumping measures and technical barriers.351 Thus, further harmonisation of

technical standards in the forms of labelling and recognising wine making practices with the

EU in the Wine Agreement also boosted Australia’s wine industry.352 Consequently, many

prominent wine regions, such as the Barossa Valley and Hunter Valley, were encouraged to

evolve from producing cheaper, bulk-based wines to more refined, elegant table wines for the

EU market, through technological innovation and experimenting with more grape varieties.353

As a result, the period between 1998-2008 saw an average annual export increase of 26%.354 In

addition, already by the year 2008, the value of Australian wine exports in the EU had reached

$1.2 billion, making every fourth extra-EU bottle drunk by European consumers, Australian.355

Whilst this success is important, it is crucial not to overstate the impact that developing a GI

system had on the Australian wine industry. Especially in the context of evaluating whether the

same system could be achieved for Australian food product GIs. Caenegem et al. argue that GIs

functioned as a ‘Trojan Horse’ in Australia’s initial wine export success, in which the industry’s

own investment in quality, investment and marketing played a more significant role.356 The

marketing of the wine, Yellow Tail, would thus fall under this way of reasoning, as well as the

fact that the first signs of the wine export boom were occurring before Australia signed the Wine

Agreement.357 Consequently, it is possible that a lot of the benefits from registering Australia’s

regions as GIs, could have been the result of already sunk reputations and consumer

understandings.358

Constructing a sui generis GI system for food products in Australia would thus need to address

whether there exists eligible GI products with established quality reputations. Otherwise, the

returned benefits of a GI, such as the ability to charge premium prices, are by no means

guaranteed and may be outweighed by administrative costs, building up quality infrastructure

350European Parliament, ‘Resolution of 26 October 2017 containing the Parliament’s recommendation to the

Council on the proposed negotiating mandate for trade negotiations with Australia’ (2017/2192(INI)),

Thursday 26 October 2017 351Rybak, (n.78) 148 352Ibid, 144 353Hira and Aylward, ‘Australia as a Triple Helix exemplar: built upon a foundation of resource and institutional

coordination and strategic consensus’ (2013) 31 Prometheus 399, 401 354Van Caenegem et al. (n.45) 23 355Rybak, (n.78) 135 356Van Caenegem et al. (n.45) 23 357Osmond and Anderson, ‘Trends and Cycles in the Australian Wine Industry, 1850 to 2000’ (1998) Centre for

International Economic Studies University of Adelaide, 18 358Van Caenegem et al. (n.45) 23

47

and informing new standards to consumers.359 In the Australian wine GI system, there is

deliberately no requirement of quality, except for 85% of the grapes need to come from the

single indicated region.360 Wine GI producers, rather prefer ‘informal mechanisms’, such as

local tastings and wine competitions, to encourage all producers using the GI to achieve high

standards.361 In this way, quality wine producers attempt to overcome the free-riding

problem.362 The construction of an Australian food product GI system should therefore not

simply reproduce this informal approach, but reflect and adapt to the needs and specific

circumstances of the food industry. Even though, Australia would have the discretion to decide

on such quality criteria and procedures when designing a sui generis food GI system363, getting

these aspects right is paramount to Australia’s potential interests in signing a bilateral agreement

with the EU. Evidently, not doing so would risk only communicating the quality of the EU’s

GI products, which could be adequately settled under a CTM system.

Secondly, if Australia is to use its Wine GI framework as a model for constructing a food

product GI system, it needs to take into account that the success of the former was due to a

simple, easy-to-use structure and there was a clear benefit to registering a GI in sight. The sui

generis wine GI system is not overly burdensome.364 As stated before, producers only have to

have 85% of the grapes from the indicated region in order to use the GI. That means, so long as

the percentage is respected, winemakers can produce any style of wine and still use the GI,

whether that be white, sparking or red. Moreover, the entire framework is designed around the

delineation of regional wine boundaries in Australia. Majority of these boundaries, except

one365, were registered without much dispute or challenges.366 Of course for a region to be

classified as a GI, it needs to satisfy certain conditions, such as a distinguishable connection of

the grape to the regional area.367 However, there are no requirements on the finished product

that relate to the inherent standard, processing or production of the wine. The absence of such

criteria stands in stark contrast to the appellation system in the EU368, and in particular the

requirements for PDO products369. In fact, Australia was even ‘adamant’ that its GI system

would not be an over-regulated appellation system.370 Thus, the main motivations for building

a wine GI system was first and foremost to satisfy the demands of the EU for the Wine

Agreement, in order to gain access to the EU’s wine market.371 Registering wine GIs in

Australia had therefore a specific purpose and an immediate foreseeable effect. For this reason,

359Bramley et al. (n.161) 114 360Van Caenegem et al. (n.45) 18 361Moir, (n.340) 28 362Van Caenegem et al. (n.45) 19 363Ibid, 64 364Stern, (n.232) 290 365cf. Beringer Blass Wine Estates Limited v Geographical Indications Committee [2002] FCAFC 295 366Moir, (n.340) 27 367Wine Australia Regulations 2018, Division 4, 57 (1) 368Stern, (n.232) 290 369Every part of production, processing and preparation of the product must take place within the area that has an

attributable quality or characteristic. 370Evidence given by the chairman of the AWBC in the Coonawarra case, as cited in Stern, (n.232) 290 371Drahos, (n.292) 260

48

many of Australia’s wine regions are wide-encompassing, often the size of some of Europe’s

countries, to allow the most amount of producers to reap the benefits of exporting to the EU.372

Australia’s possible implementation of a GI food system should thus accommodate for the

different circumstances leading up to EU-Australia FTA compared to the Wine Agreement, as

well as adapt to the food industry. Many of the favourable circumstances that led to the signing

of the Wine Agreement and ultimately the legislation of a sui generis GI system do not appear

to be present or able to provide Australian food industries with a similar set of advantages.

First, it is unclear that agreeing to a sui generis form of GI protection in the EU-Australia FTA

would give Australian food products a definite increased market access to the EU for these

products.373 It is unforeseeable that a type of Australian cheese for example, will have better

market access and competitive advantages in the EU as a result of the FTA. Thus, the only

incentive the EU offers to Australia in agreeing to a strong-form sui generis system for food is

the potential for development in local communities and other reciprocal spillover effects.374 A

clear and direct advantage is therefore not immediate, unlike the case of market access for the

Wine Agreement, as GIs are not the only tool to promote regional development.However, this

is not to say that there is no possibility for positive spillover effects in the Australian context,

as the experience of the Granite Belt wine GI proves otherwise. In this region, the registered GI

allowed the wine producers to attain an identity and quality reputation for their wines, which

led to the inflow of interested tourists and in turn, the demand for services in food and

accommodation.375 However, given the possibility of food products generating similar effects

on touristic ventures is ‘restricted’ and perceived as a ‘challenge’376, Australia’s immediate

interest in establishing a GI framework for foods in the FTA is not present, unlike the case for

wines.

Second, there does not seem to be the same demand for food GIs, as there were for wines.

Whilst there exists strong food product candidates in Australia, such as King Island beef and

dairy products377, Mandalong lamb or Northern Territory barramundi, because they have

‘unique regional characteristics’378, it is interesting that none of these products have applied for

a GI CTM. In fact, there is only one Australian food CTM on the register; the Mornington

Peninsula.379 The rest are foreign applications. This lack of interest implies that Australian

producers do not recognise any applicable use for registering a monopoly right or delineating

regional borders for the protection of their quality products, in contrast to the wine industry.

Even then, it is also unclear that the determination of these food GI borders would be a simple

task. The purpose of the GI would not necessarily be for the maximisation of producers in the

372Ibid, 264 373Handler, (n.227) 194-195 374Cleary and Van Caenegem, ‘Mitigating “one-size-fits-all” approaches to Australian Agriculture: Is there are

case to be made for Geographical indications?’ in Van Caenegem and Cleary (eds.) The importance of place:

Geographical Indications as a tool for local and regional development (Springer, 2017), 111 375Van Caenegem et al. (n.45) 25; Drahos, (n.192) 274-276 376Van Caenegem et al. (n.45) 26 377Thorn, ‘New World Case Study: King Island-Living the Place Brand’ in Van Caenegem and Cleary, (n.374);

Van Caenegem et al. (n.45) 28-32 378Rimmer, (n.77) 41; Van Caenegem et al. (n.45) 54 379Moir, (n.340) 28

49

export market, unlike the Australian wine GI system. Moreover, food GIs do not have as straight

forward and standardised a connection between the product and the land, like grapes are to soil,

but can involve a whole set of human elements, such as processing techniques, that ultimately

affect the quality of products.

In summary, the potential to converge with the EU on the protection of food GIs therefore does

exist, but only if Australia chooses to act and takes into consideration the many circumstantial

factors that led to its success.

50

Conclusions As like-minded partners in the pursuit of open, free and liberal international trade, the EU and

Australia naturally find themselves in the negotiations of an ambitious and comprehensive FTA.

This means that above formulating an agreement on traditional trade matters, such as tariff

levels, there is a strong emphasis on regulatory measures that pose the real obstacles to bilateral

behind the border market access.

This paper focuses in detail on one of these regulatory measures in the current negotiations of

the EU-Australia FTA. Namely, GIs as a form of IP. GIs are particularly contentious because

they stand at the trisect point of agricultural, IP and trade policy, in which Australia and the EU

have not broadly overlapped on in the past. This paper is concerned with two specific questions.

First, where do the main challenges lie in negotiating GIs for the FTA? Second, what are the

main potential points of convergence for GIs in the EU-Australia FTA?

The first chapter looks at Australia’s GI legislative framework and then the EU’s, to establish

a foundation of each party’s opening position at the commencement of the FTA negotiations.

Australia’s GI legislative framework, particularly for food products, differs substantially from

the EU’s in many ways, including GI registration, opposition and enforcement. The root cause

for this is because Australia does not have a sui generis system, except for wines, but

implements the TRIPS GI requirements under its trademark system. Consequently, Australia

provides weaker protection for GIs than the EU, which currently stands as a major deterrent to

the registration of EU GIs in Australia who seek strong-form protection. Nevertheless, the EU

and Australia correspond quite strongly on their standards of wine GIs, as Australia

implemented a sui generis system for the purposes of the EC-Australia Wine Agreement in

1994. These comparisons thus signal the prospective challenges and points of convergence for

the negotiations that lay ahead.

The second chapter then provides a deeper study into respective underlying interests and

demands to include GI provisions within the FTA. On the EU’s side, GIs are considered as

‘must haves’380 for its Global Europe new generation FTAs, as their protection is paramount to

preserving national, cultural traditions and upholding economic benefits of GI registration

internationally. Increasing GI protection in Australia thus serves the EU’s objectives of

enhancing its presence in the Asia-Pacific and preventing wide spread abuse of GI product

names on the Australian market. In order to do that, it requires meaningful changes to

Australia’s current GI legislative framework, such as strong-form protection for food products,

coexistence of GIs with trademarks, phase-out of Australia’s descriptive product names that are

protected EU GIs, and administrative-body enforcement. Comparatively, Australia’s interests

are limited to the potential economic benefits of agreeing to the EU’s minimum requirements,

except for GI extension to food products, as these have been opposed on the multilateral level

of negotiations.381 Additionally, Australia is also likely to want to retain many of its descriptive

product names, as it is not in the economic best interest of producers to start protecting them as

GIs.

380DG AGRI, (n.33) 8–9 381cf. Brink, (n.37)

51

The third chapter analyses the main challenges facing the EU-Australia GI negotiations. It

identifies three main obstacles. First, the ability of the EU and Australia to agree on the level of

protection each party will grant for the GIs that are included on the preferential short list.

Second, whether both parties can even agree on a GI list in the first place, especially for those

products that are considered common English terms in Australia for products that have

nonetheless gained GI status in the EU. Many of which are likely to stem from the EU’s claw-

back list382, and be widely used and valued on the Australian market. Third, whether the EU

and Australia are able to agree on various procedural elements, such as the right to use a

registered GI, given that there is no current consensus on their public or private right status, and

GI enforcement, considering Australia will have to pay for many of these measures if it does

accept the EU’s proposed requirement. If Australia and the EU are able to overcome any of

these issues in the trade negotiations, it will consequently be a strong feat for bilateral

cooperation.

Finally, the fourth chapter determines three main potential points of convergence between the

EU and Australia on GI negotiations. First but not foremost, the procedure of registering GIs

when they conflict with existing trademarks. By way of exception, both Parties have the legal

means to either prioritise GIs over trademarks or prevent GI registration, depending on

circumstances at hand. Second, with the exclusion of Prosecco, both the EU and Australia are

already in conformity on GIs and traditional expressions relating to wine. This leaves ample

potential to integrate the existing Wine Agreement into the FTA, without any changes to current

standards. Third, the potential for Australia to converge with the EU on registering food GIs in

a sui generis system is present, albeit at this stage far-off, if Australia has the will to replicate

many of the successful benefits of the Wine GI system. In any case, it will need to accommodate

for many variables that influenced these achievements and be sure that it will provide additional

advantages to Australia that the current trademark framework does not provide.

As a whole, this paper is useful for understanding the EU and Australia’s respective GI

frameworks, before the FTA is concluded. It is also relevant for appreciating the current stakes

involved for both Parties concluding GI provisions in the FTA. Lastly, it is noteworthy for

retrospective analyses of the future impact of the FTA on bilateral protection of GIs. An

ambitious and comprehensive GI agreement thus stands at the cusp of EU-Australia trade

relations.

382European Commission (n.179)

52

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