Written by John Aclis
Have you ever bought prosciutto or camembert, brie, edam or gouda cheese? Australian producers of such foodstuffs may soon face significant disruption to their trade if the proposed Australia-European Union Free Trade Agreement (FTA) goes forward in its current form.
There are currently two mechanisms to register a “Geographical Indication” in Australia, which is a name used in respect of goods that identifies that those goods originate from a specific region. Such indications are registered under the Trade Marks Act 1995 (Cth) as certification trade marks or under the Wine Australia Act 2013 (Cth). Traders who unlawfully use any listed indications may be liable for civil remedies such as damages and an injunction. There are currently approximately 405 certification marks registered on the Trade Mark Register.
The EU has recently put forward, under the FTA, a list of 172 various foodstuff names proposed to be registered as Geographical Indications in Australia pursuant to the above mechanisms. In its current form, unless use of an indication does in fact accurately denote a product’s origin, traders would be prohibited from engaging in conduct including, but not limited to, direct or indirect commercial use of listed indications in respect of comparable products and misuse of such indications, even if the true origin is displayed and even if it is clarified that the indication is being used to indicate a style, type or flavour of product, rather than its geographical origin.
The list of proposed indications includes certain words being underlined in order to clarify that the use of such words on their own are not intended to be prohibited. Examples of underlined words include the following:
- Prosciutto di Parma
- Brie de Meaux
- Camembert de Normandie
- Gouda Holland
- Edam Holland
“Gorgonzola” is an example of an indication that is not underlined, which means that use of the word alone would be subject to full protection under the proposed list.
Many Australians use the above underlined words to describe the kind of toppings they want on their pizzas or the kind of cheeses to include on their platters, without necessarily expecting or assuming that such products will have originated from specific locations such as the Province of Parma in Italy or from the Brie region of France.
As such, protecting Australian traders from overly harsh restrictions on the one hand, and providing sufficient protection for foreign geographical indications on the other hand, presents an important balancing act for the Australian Government.
Perhaps the most critical question for Australian producers is whether the FTA is currently too restrictive and whether the inclusion of the underlined exclusions is sufficient to provide certainty as to how they can market their goods.
It could well be argued that some words have failed to be excluded when they ought to be, such as “gorgonzola”, as mentioned above. Further, even if Australian producers adhere strictly to using only the underlined words, according to the FTA, when such use is considered along with a product’s specific packaging/container, such use may still be deemed to convey a false impression regarding product origin.
Rather vaguely, the FTA also prohibits traders from engaging in “any other practice liable to mislead the consumer as to the true origin of the product”. As such, in the FTA’s current form, Australian producers do not have a great degree of certainty as to what will not constitute an unlawful use of the proposed indications.
As the FTA is still being openly considered, the Australian Government is accepting objections from the public in respect of the current list of proposed indications until 13 November 2019.
For more information on making formal objections, you can visit the Department of Foreign Affairs and Trade website or give us a call.