RESTRICTEDWORLD TRADE
ORGANIZATIONIP/C/W/117/Add.12
10 February 1999
(99-0497)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW UNDER ARTICLE 24.2 OF THE APPLICATION OF THE
PROVISIONS OF THE SECTION OF THE TRIPS AGREEMENT
ON GEOGRAPHICAL INDICATIONS
Checklist of Questions1
Responses from New Zealand
Addendum
The Secretariat has received the following responses from the Permanent Mission of New
Zealand in a communication dated 1 December 1998.
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I. RESPONSES TO THE QUESTIONS IN DOCUMENT IP/C/13
A. GENERAL
1/2/3. Is protection for geographical indications provided through unfair competition law, e.g.,
passing off, false designation of origin; through a formal procedure for notification/registration
before protection is available; or through both?  Does the recognition of a geographical indication
require registration?  Is there one single regime of protection of geographical indications for allproducts?  If not, identify the different regimes.  Do(es) the regime(s) of protection of geographical
indications also extend to services?
Protection for geographical indications is provided through the Trade Marks Act 1953, the
Fair Trading Act and the common law action of "passing off".  Section 9 of the Fair Trading Actstates that no person shall, in trade, engage in conduct that is misleading or deceptive or is likely to
mislead or deceive.
In order to provide for a registration system for geographical indications, the Geographical
Indications Act 1994 was passed.  This Act provides for the registration and protection ofgeographical indications in relation to "specified goods".  These are those classes of goods declared
by the Regulations under the Geographical Indications Act.  The Geographical Indications Act is not
yet in force and must be brought into force by an Order of Council.  The Geographical Indications
Regulations enacted under the Geographical Indications Act will prescribe any forms to be used for
the purposes of the Act.  They will also specify the manner in which applications and determinationsunder the Act must be published, criteria to which a Geographical Indications Committee must have
                                                     
1 Documents IP/C/13 and IP/C/13/Add.1IP/C/W/117/Add.12
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regard in determining a geographical indication and any fees payable.  The Geographical Indications
Regulations are currently being drafted.
4. What provisions of law or regulations are directed to the recognition of geographical
indications required by Articles 22.2 and 23.1 of the TRIPS Agreement
Section 9 of the Fair Trading Act and Section 4(2) of the Geographical Indications Act apply.
Section 9 of the Fair Trading Act states that no person shall, in trade, engage in conduct that is
misleading or deceptive or is likely to mislead or deceive.  Section 4(2) of the Geographical
Indications Act provides that, where a person, in trade, uses, in relation to a specified good a protected
geographical indication, whether used:
(i) together with the true geographical origin of the goods;(ii) in translation; or(iii) accompanied by any of the words "kind", "type", "style" or "imitation", or any similar
word or expression;
and the goods did not originate in the geographical origin to which the protected geographical
indication relates, that person will be in breach of Section 9 of the Fair Trading Act.
5. If the required recognition of geographical indications is not provided through statutes or
regulations, please explain, in detail, the mechanism or mechanisms through which the protection
required is provided.
See response to questions 1-3 above.
6. Please provide a few examples of domestic geographical indications protected in accordance
with the means discussed above and indicate the means by which such protection is provided.
"New Zealand" (being the North Island, South Island, Chatham Islands), and every region of
New Zealand from time to time, shall be deemed to be a geographical indication protected under theGeographical Indications Act.  These New Zealand geographical indications will be given automatic
protection under the Geographical Indications Act.
It should be emphasized that "New Zealand" as a whole qualifies as a protected geographical
indication under the Geographical Indications Act.
7. Is the higher level of protection required for wines and spirits under Article 23.2 of the TRIPS
Agreement provided for any other product?  If so, please specify such products and the law under
which they are protected.
See the response to questions 1-3 above.  The protection available under the Geographical
Indications Act applies in relation to "specified goods".  These are declared by the Regulations underthe Geographical Indications Act.  In developing these Regulations, New Zealand is, of course,mindful of international obligations under the WTO Agreements.IP/C/W/117/Add.12
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B. DEFINITION AND CRITERIA FOR RECOGNITION
8. How are geographical indications defined?
The Geographical Indications Act 1994 defines "geographical indications" as meaning "a
description or presentation used to indicate the geographical origin of the goods".  "Geographical
origin" means any country, region, locality or linear feature.
9. Would such a definition comprise geographical indications identifying products of a certain
quality or reputation which are indirectly linked to a specific region?
The definition of the Geographical Indications  Act 1994 clearly links the "specified good" to
its geographical origin.  It is noteworthy also that Article 22.1 refers to a situation in which a given
quality, reputation or other characteristic of a good must be "essentially attributable" to its
geographical origin.
10. In determining whether recognition should be given a geographical indication, what criteria
are considered?
The criteria will be prescribed by regulations that are currently being drafted.
11. Is there any human creativity involved in the making of specific products under protection by
the system of geographical indications?  If so, how much?  And do these products involve any human
factors?
Not applicable.
12. Are there any other intellectual property rights involved, such as patents for example?
The Trade Marks Act.  See the response to question 1 above.
13. What authority, if any, may define the geographic region or area for which rights are claimed
and on what basis is such definition made?
Under the Geographical Indications Act, a Geographical Indications Committee shall
determine an application to register a geographical indication relating to a geographical origin in New
Zealand.  The Committee must have regard to certain factors in making such a determination.  See the
response to question 10 above.
14. Does your legislation contain criteria for homonymous geographical indications for wines?
Section 8(3)(a) of the Geographical Indications Act implements Article 23(3) of the TRIPS
Agreement.  The provision provides that the Registrar of Geographical Indications shall specify theconditions if any applying to the geographical indication.  A condition may specify when a
homonymous geographical indication can be used.
15/16. Does your national legislation provide for recognition and protection of geographical
indications or appellations of origin of foreign countries?   Is there any specific prohibition in the
legislation/regulations/rules/procedures covering geographical indications not protected in the
country of origin?  If so, please specify the relevant statutory provision.IP/C/W/117/Add.12
Page 4
Section 9(1)(a)(ii) of the Geographical Indications Act provides for registration of
geographical indications or appellations of origin of foreign countries notified under a bilateral ormultilateral agreement requiring the protection of geographical indications.  Although there is nospecific prohibition against the registration of geographical indications not protected in the country oforigin, in practice, as New Zealand will only register foreign geographical indications notified to itunder a bilateral or multilateral agreement, it is unlikely that geographical indications would beregistered which are not protected in the country of origin.
C. PROCEDURE FOR RECOGNITION
17. With respect to any formal system for reco gnition of geographical indications, must the
applicant be a governmental organization or can a private entity own the rights to a geographical
indication?
In relation to a geographical indication inside New Zealand, a private entity may make an
application for the protection of that geographical indication under the Geographical Indications Act.
See the response to question 15 above for registration of foreign geographical indications .
18. What are the competent authorities where the protection of a geographical indication can be
obtained?
In respect to a geographical indication within New Zealand, an application for registration of
that geographical indication may be made to the Surveyor-General in accordance with the Regulations
made under the Act.
See the response to question 15 above for registration of foreign geographical indications .
19. Do the procedures which lead to the recognition of a geographical indication take place
ex officio or must they be based on the initiative of an entity or person?
The Geographical Indications Act only protects those geographical indications that are
registered under the Act.  To obtain recognition there must be an application lodged by an entity or
person.
In relation to the registration of a geographical indication inside New Zealand, any person
may make an application to the Surveyor-General for the registration of a geographical indicationinside New Zealand.  The Surveyor-General then appoints a Geographical Indications Committee to
make a determination in respect of the application.  A determination of the application by a
Committee is made in accordance with the Regulations made under the Act.
See the response to question 15 above for registration of foreign geographical indications .
20. What, if any, fees are involved in the application and maintenance of rights in a geographical
indication?
Any fees involved in the application and maintenance of rights in a geographical indication
will be prescribed by regulation.
It is proposed that the fees will be payable to the Registrar of Protected Geographical
Indications for:IP/C/W/117/Add.12
Page 5
• Submitting a geographical indication for registration on the Register of Protected
Geographical Indications.
• Notifying the Registrar of an alteration or removal of a protected geographical
indication.
• Inspecting the Register.
• Obtaining a certified copy of particulars on the Register.
It is proposed that fees also be payable to the Surveyor-General for:
• Application to determine a geographical indication relating to a geographical
indication in New Zealand.
• Application to determine two or more geographical indications the geographical
origins of which are in New Zealand and are contiguous.
• Application to alter a protected geographical indication relating to a geographical
origin in New Zealand.
• Application to remove from the Register a protected geographical indication relating
to a geographical origin in New Zealand.
• Application to the New Zealand Geographic Board to review a determination of a
Geographical Indications Committee.
21/22/23. If criteria must be set out in an application for recognition of a geographical
indication, are those criteria purely geographic in nature?   What other criteria, if any, must be set out
in an application for recognition of a geographical indication?  What information must be supplied in
an application for rights in a geographical indication?
See the response to question 10 above.
24. Must the goods or services with respect to which a geographical indication is claimed be set
out?
The "specified goods" to which an application relates must be set out in the application for the
determination of a geographical indication.  See also the response to questions 1-3 above.
25. What mechanisms are provided to oppose the recognition of a geographical indication?  How
is an investigation conducted after such a complaint?
In relation to a geographical indication within New Zealand, any person who is dissatisfied
with a determination may apply to the New Z ealand Geographic Board for a review of the
determination of a geographical indication.  This application may be made any time within15 working days after the date of publication of notice of the determination by the Geographical
Indications Committee.  This application must be in the form prescribed by the Regulations.IP/C/W/117/Add.12
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Once an application for review has been received, the Board shall review the determination of
the Geographical Indications Committee and may reverse, alter, or confirm it.  The Board in making
its decision must have regard to natural justice.
Once a decision has been made the Board must publish its decision.
26. Who can oppose the recognition of a geographical indication?
See the response to question 25 above.
27. If your national legislation provides for recognition and protection of geographical
indications or appellations of origin of foreign countries, what is the procedure that has to be
followed in order to obtain such recognition and consequent protection?
See the response to question 15 above.
D. MAINTENANCE
28. How long does recognition for a geographical indication continue?
Indefinitely.  However, an application may be made to have the geographical indication
altered or removed from the Register of Protected Geographical Indications.
29. If recognition of a geographical indication mu st be renewed or reaffirmed, what information
must be provided in order to effect such a renewal or reaffirmation?  Specify any fees involved in
renewal or reaffirmation.
Not applicable.  See the response to question 28 above.
30. Must a geographical indication be used in order to maintain rights?  If so, how is such use
determined?
No.  Protection of the geographical indication in relation to the specified goods is granted
through registration.
31.  Is there a specified limit for non-use before rights in a geographical indication cease and, if
so, what is that limit?
Not applicable.
32. Who monitors the use of geographical indications to determine if the criteria identified in the
application continue to be met?
Not applicable.
33. If a government entity is responsible for monitoring the use of geographical indications, what
are its procedures for doing so?
Not applicable.
34. Are there means by which interested parties may request termination of a geographical
indication based on non-use or failure to maintain the criteria identified in the application?IP/C/W/117/Add.12
Page 7
An application for removal or amendment of a registered geographical indication in relation
to a geographical indication inside New Zealand may be made in accordance with the Regulations.
Once an application for removal or amendment is made, a Geographical Indications
Committee considers the application, and the Registrar of Geographical Indications acts on the basisof that determination.
35. Do the procedures which lead to forfeiture of a geographical indication take place ex officio
or must they be based on the initiative of an entity or person?
Any interested party may make an application for the removal or amendment of a registered
domestic geographical indication.
E. SCOPE OF RIGHTS AND USE
36. May anyone who meets the criteria submitted to obtain recognition of a geographical
indication use that geographical indication after recognition is given or must additional criteria or
procedures be followed by that party before use is permitted?
Anyone whose specified goods originate within the registered geographical indication may
use that geographical indication.  There are no additional criteria or procedures imposed on the use of
a geographical indication.
37. Who makes the determination regarding use of a geographical indication by particular
parties, the entity responsible for the recognition or the entity that obtained the recognition?
See the response to question 36 above.
38. Are there fees involved in receiving authorization to use a particular geographical indication
and, if so, what are those fees and how are they established?
Not applicable.
39. If there is a dispute regarding use of a geographical indication by a particular party, what
procedures are followed to resolve it?
The Geographical Indications Act provides that if a person uses a protected geographical
indication and the goods did not originate in the geographical origin to which the protected
geographical indication relates, the person shall be deemed to have contravened Section 9 of the Fair
Trading Act.
The relevant provision in the Fair Trading Act states that no person shall, in trade, engage in
conduct that is misleading or deceptive or that is likely to mislead or deceive.  Therefore, under the
Geographical Indications Act, if someone is deemed to have contravened this provision under the Fair
Trading Act, an interested party may apply to the High Court of New Zealand for an injunctionrestraining the offender from using the protected geographical indication in a misleading or deceptive
manner.
40. Must individual authorized users of a geographical indication use that geographical
indication continually to retain their right to use it and, if so, how is their use determined and howlong will disuse be permitted?IP/C/W/117/Add.12
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See the response to question 30 above.
41. If there is a dispute over continuity of use by a particular party, how is it resolved?
Not applicable.
42. Does the regime for protection of geographical indications allow geographical indications to
be licensed and, if so, what conditions are imposed on such licenses?  If such conditions are not met,
what is the effect on the geographical indication?
The Geographical Indications Act is silent as to whether geographical indications can be
licensed.  However, as the use of a geographical indication in relation to specified goods must be bysomeone in the geographical origin protected by the geographical indication it is unlikely that a
geographical indication could be licensed.
43. How is "grandfathered use" of a geographical indication, under Article 24.4 of the TRIPS
Agreement, applied in your country?
Section 5(3)(a) and (b) of the Geographical Indications Act allow the use of a protected
geographical indication, in relation to specified goods under the Act, if the goods were produced, orbeing produced, before the registration of the protected geographical indication, or the goods weredeclared to be specified goods.
Section 5(2)(c) of the Geographical Indications Act also provides a grandfather provision in
relation to the use of trademarks registered before goods became specified goods under the Act.
F. RELATIONSHIP TO TRADEMARKS
44/45. What steps are taken to ensure that, in recognizing a geographical indication, the obligations
of Article 16.1 of the TRIPS Agreement are not nul lified and impaired?  What steps are taken to
ensure that, in recognizing a geographical indication, the obligations of Article 16.2 and 16.3 of the
TRIPS Agreement are not nullified and impaired?
See the responses to questions 43 above and 46 below.
46. What procedures are foreseen in case of a conflict of a geographical indication with a
trademark?
Section 5(2)(c) of the Geographical Indications Act provides that the use, in relation to
specified goods, of a trademark, applied for or registered under the Trade Marks Act 1953, if the
trademark was applied for, registered, or used in New Zealand in good faith in relation to goods of thesame class, before goods of that class were declared to be specified goods, is not restricted.  This
provision creates a grandfather provision for the use of trademarks.
A party is also prevented from obtaining as a registered trademark containing a geographical
indication that is protected under the Geographical  Indications Act.  Under Section 16 of the Trade
Marks Act 1953, it is not lawful to register as a trademark any matter the use of which would be likely
to deceive or cause confusion, or would be contrary to law.  An application to register a protectedgeographical indication as a trademark would be considered to be covered by either or both of these
provisions.IP/C/W/117/Add.12
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G. ENFORCEMENT
47. How are rights in the geographical indication enforced?  Are provisions available under
unfair competition law?  Trademark law?  Other laws?  Provide citations to the laws and, if they have
not been notified under Article 63.2 of the TRIPS Agreement, please provide copies.
See the responses to questions 1-4 above.  The Fair Trading Act provides for the legal means
for interested parties to prevent the misuse of a geographical indication.  An interested party mayapply to the High Court for an injunction restraining use of a protected geographical indication in a
misleading or deceptive manner.  If the geographical indication is also registered as a trademark, then
rights may be enforced under the Trade Marks Act.
48. Who has the right to enforce a geographical indication?
Any interested party has the right to enforce a geographical indication.
49. What judicial or administrative bodies have jurisdiction over enforcement actions related to
geographical indications?  Are there fees involved and, if so, what are those fees?
Enforcement of a geographical indication occurs under the Fair Trading Act.  The High Court
of New Zealand has the jurisdiction to hear claims for injunctive relief for the misleading or deceptive
use of a geographical indication.
50. Must the public be notified of the existence of a geographical indication and, if so, how and
how often?
Where an application for the registration, amendment or removal of a geographical indication
has been forwarded to a Geographical Indications Committee for a determination, that Committee
shall publish, on the payment by the applicant of any fees prescribed by Regulations, a copy of the
application, a statement of what the Committee is required to determine, and a statement invitingwritten submissions on the application to be made to the Committee.
Once a determination has been made, the Committee shall publish the result of the
determination on payment of any prescribed fees.
Any person may have access to the Register for the purpose of inspecting it during each
working day at such times as the Registrar shall de termine.  A fee may be imposed for this service by
the Regulations.  Copies and certified copies of any particulars in the Register may also be obtained.
51. Is unauthorized use of a geographical indication subject to criminal action and, if so,
describe the procedures.
Enforcement of a geographical indication is by civil action.
H. INTERNATIONAL AGREEMENTS
52/53. Is your government party to an international, including bilateral or plurilateral, agreement
for the notification and/or registration of geographical indications?  If so, please name the
international agreement and explain the relationshi p between it and your national legislation.  What
other international agreements, if any, have been entered into?  What do those agreements provide?
No.IP/C/W/117/Add.12
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II. RESPONSES TO THE QUESTIONS IN DOCUMENT IP/C/13/ADD.1
A. GENERAL (SECTION A OF DOCUMENT IP/C/13)
1. Does your economy's industrial property law and/or related law prevent the use of
geographical indications identifying wines or spirits against products not originating in the place
indicated by the geographical indication, even where the true origin of the goods is indicated or thegeographical indication is used in translation or accompanied by expressions such as "kind", "type",
"style", "imitation" or the like?
See the response to question 4 under I above.
B. 
DEFINITION AND CRITERIA FOR RECOGNITION (SECTION B OF DOCUMENT IP/C/13)
2. Is there a clear distinction among the terms "geographical indications", "appellations of
origin" and "indications of source" in your economy's industrial property law and/or related law, or
are there any substantive criteria to distinguish these terms?
- The Geographical Indications Act defines "geographical indication" as meaning "a
description or presentation used to indicate the geographical origin of the goods".
- "Geographical origin" is defined in the Geographical Indications Act as meaning a
country, region, locality or linear feature.
- See the response to question 8 under I above.
3. Does your legislation contain criteria for homonymous geographical indications for wines
and spirits?
See the response to question 14 under I above.
C. RELATIONSHIP TO TRADEMARKS (SECTION F OF DOCUMENT IP/C/13)
4. Does your economy's industrial property law and/or related law provide the refusal or
invalidation of a trademark registration, which consists of or contains geographical indications
identifying wines or spirits with respect to such wines or spirits not originating in the indicatedterritory?
See the response to question 46 under I above.
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