Feta, Gruyere and Gorgonzola…
All cheeses that are close to our hearts (and taste buds) and have been announced as geographical indications that the EU is seeking to protect under the terms of a new free trade agreement with Australia (EUFTA).
These negotiations comes as a timely reminder for food businesses to ensure that they do not inadvertently use a geographical indication (GI) that is protected by a certification mark, such as “Parmigiano Reggiano”, and to keep an eye on the progress of EUFTA negotiations for any restrictions that could apply to branding of such products moving forward.
Under the Trade Mark Act 1995 (Cth), trade marks can be registered and used to indicate that a good or service meets a certain standard, known as a certification mark. This standard must be set out in rules that are approved by the Australian Competition and Consumer Commission (ACCC), and can specify product quality, content, productions methods and product origins in order to be labelled with the certification mark.
For example, the rules corresponding with the certification mark for:
- “Parmigiano Reggiano” provide that the mark can only be used with respect to cheese that is made in Italy – a geographical indication; and
- “Pecorino Toscano” specifies requirements with respect to the products origin in Tuscany, manufacturing / processing requirements and traceability of the cheese / its ingredients.
If a business were to sell products with these marks and did not meet the respective requirements and / or obtain the relevant licence, they may be engaging in trade mark infringement and making misleading representations that are actionable under the Australian Consumer Law (ACL).
Notably, the Wine Australia Act 2013 (Cth) also provides a legislative framework for GIs associated with wines.
GIs under the EUFTA
If implemented in its current form, the EUFTA would protect GIs in relation to certain agricultural and alcohol products (a list can be accessed at this link) from:
- any direct or indirect commercial use of a GI name for comparable products, or in a way that exploits the reputation associated with the GI, including when that product is used as an ingredient;
- misuse or imitation, even if the true origin of the product is indicated or if the protected name is translated, transcribed, transliterated or accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient; and
- any other false or misleading indication about the product’s origin, nature or essential qualities of the product, on packaging, advertising material or documents relating to the products, and the packing of the product in a container that could convey a false impression as to its origin, including when those products are used as an ingredient.
If the EUFTA goes ahead, it is unclear how this prohibition would interact with existing certification mark registrations i.e. whether these marks would continue to be held by existing registrants, transitioned to EU trade mark rights or replaced with a general prohibition through legislation.
These restrictions would replicate existing requirements under the ACL with respect to accurately describing product attributes. However, for local food businesses, the proposed GI restrictions would significantly limit how certain agricultural and alcohol products could be branded, packaged and/or advertised – noting that terms such as “style” and “flavour” could not be used to get around the prohibition and trade dress must not be used to make it appear as though it originated from the EU. This would be especially problematic for local producers of “Kalamata”, “Gruyere”, “Gorgonzola” and “Feta” products where there is no other way for the products to be accurately described. The Australian Government has indicated that it will attempt to negotiate for use of these names with a clear indication that it is of Australian origin i.e. “Australian Feta”.
Pending the outcome of these negotiations and whether Australia enters into the EUFTA, this may lead to significant reform of how products and their origin are described in Australia.
This post was prepared by Valiant Warzecha, Jessie Buchan and Melinda Upton.