Australia lacking a taste for additional GIs
6 min read
Australia and the European Union (the EU) continue to negotiate a free trade agreement (FTA), including as to whether Australian businesses will be prevented from using over 200 food and beverage names. All the while, certain Italian cheese and prosecco consortia have launched trade mark litigation to protect popular names that are widely used by Australian businesses, such as ‘parmesan’ and ‘prosecco’.
- Although Parmigiano Reggiano is a Protected Designation of Origin under European law, Australian courts have found that ‘parmesan’ is a generic term for a particular style of hard cheese, and does not denote an origin in Italy. Similarly, ‘prosecco’ is not, at present, protected in Australia.
- However, if Australia accedes to Italy’s requests in the FTA negotiations, many Australian businesses would have to give much stronger protection to the names of hundreds of EU products that indicate their geographical origin (as geographical indications (GIs)). Many businesses would, as a result, have to alter the branding, names and advertising of their products, and may not be able to rely on trade marks in their portfolio that name, denote or evoke the GI. (We explain GIs in an earlier Insight).
- Australia has not yet committed to protecting any of the additional GIs requested by the EU – the final position will be contingent on it obtaining satisfactory access to the European market.
Who in your organisation needs to know about this?
In-house counsel, IP teams and trade mark attorneys.
The ‘Kraft Parmesan Cheese’ trade mark opposition
On 23 September 2022, the delegate of the Registrar of trade marks decided that Kraft Foods Group Brands LLC (Kraft) could register its ‘Kraft parmesan cheese’ trade mark.
The Italian Consorzio del Formaggio Reggiano (the Parmesan Consortium), which owns four registered Australian certification trade marks and one standard mark consisting of or containing ‘PARMIGIANO REGGIANO’, opposed the registration of the mark, on the basis that it would cause confusion because ‘parmesan’ is the literal translation of ‘Parmigiano’ (which denotes Parmigiano Reggiano). It further argued that the names ‘parmesan’ and ‘Parmigiano Reggiano’ are used interchangeably in Australia. Kraft argued that ‘parmesan’ is a generic term in Australia for a particular style of hard cheese, and the fact some parmesan cheese is not from Northern Italy can be seen on its packaging.
The delegate found that:
- Kraft’s mark was not likely to deceive or cause confusion, as consumers would be aware that parmesan in Australia did not always refer to Parmigiano Reggiano from Italy, and instead was often used to describe a style of cheese or flavour, and
- the Italian cheese producers represented by the Parmesan Consortium had not acquired a substantial reputation in ‘parmesan’ in Australia.
On 14 October 2022, the Parmesan Consortium filed an appeal in the Federal Court, seeking to have the delegate’s decision reversed or set aside, and the trade mark registration refused. This appeal is yet to be heard.
How does this relate to the EU-AU Free Trade Agreement negotiations?
As we explained in ‘Freedom to Feta – where is Australia headed on geographical indications’, during negotiations for the FTA between Australia and the EU, the EU has requested that Australia protect (and its businesses refrain from using) a list of over 200 foods, agricultural products and spirits as GIs. This includes GIs on products even if the true origin of the product is clear (eg ‘Feta-style Australian cheese’), ‘direct or indirect commercial use’ and ‘misuse, imitation or evocation’ (so, even rough translations of names, and images that ‘evoke’ the GI).
If these requests are accepted by the Federal Government, many Australian businesses would have to alter their branding, names and advertising on products. Additionally, an AU-EU FTA could allow for GIs to be registered even though they conflict with a prior registered trade mark. So, despite registrations such as Kraft’s ‘Kraft parmesan cheese’, it may be that Australia negotiates an FTA that allows the GIs to take precedence.
It is unlikely, however, that Australia will agree to the EU’s requests as they stand. There are a number of countries that have recently signed FTAs with the EU and adopted more balanced approaches (Canada, Japan, Singapore and South Korea). Some of these FTAs:
- provide exceptions for the use of common translations (such as ‘parmesan’, as long as its use does not mislead the consumer as to the true origin of the product);
- specify that it is up to each country’s government to determine the rules for deciding when a GI can be registered if it conflicts with prior trade mark rights (or even that a country is not required to protect a later GI over a well-known trade mark); and
- provide exceptions for existing businesses legitimately using the listed name (to continue using the name indefinitely or for a transitional period).
Australian Prosecco industry fighting to keep the name ‘Prosecco’
Australia’s $200 million prosecco industry is battling to retain the right to use the name ‘prosecco’. The Consorzio di Tutela della Denominazione di Origine Controllata Prosecco (the Prosecco Consortium) is pushing to have the word ‘prosecco’ protected as a GI, saying prosecco comes from a defined region in Italy.
However, opponents point out that it was only in 2009 that the Prosecco Consortium created a geographical area in Italy called ‘Prosecco’ and renamed the prosecco grape variety ‘Glera’, so prosecco is first and foremost a grape variety.
In November 2022, a group of Australian winemakers met with parliamentarians to brief them on the importance of the prosecco varietal for the economy, and the risk to Australian businesses of accession to the EU’s requests.
In a recent decision of Singapore’s High Court, the appeal court sided with Australian Grape and Wine Inc and refused to register ‘prosecco’ as a GI. The High Court found that ‘prosecco’ is a grape variety, and that registering the GI ‘prosecco’ would likely mislead consumers into thinking that all ‘prosecco’ wines originated from the specified region (Prosecco) in Italy, when in fact some ‘prosecco’ wines originate in other countries, such as Australia.
The Prosecco Consortium is yet to bring any action in relation to prosecco in an Australian court.
Actions you can take now
- Continue to monitor any developments on these issues in Australia.
- Review your registered Australian trade marks against the list of proposed EU GIs, and consider whether any of them might be vulnerable to an identical or similar GI being registered.
- Potentially affected businesses should consider asking lawyers to advocate on their behalf with DFAT and government representatives regarding the impact of such GIs on their businesses.