WORLD TRADE
ORGANIZATIONIP/C/W/392
9 December 2002
(02-6774)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
REVIEW UNDER ARTICLE 24.2 AUSTRALIA'S APPLICATION OF THE GIS
PROVISIONS OF THE TRIPS AGREEMENT
The following communication, dated 25 November 2002, has been received from the
Permanent Mission of Australia.  It was circulated as an advance copy at the TRIPS Council meeting
on 26 November 2002.
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I. INTRODUCTION
The following notes provide a brief overview of the main features of Australia's domestic
regime for the protection of geographical indications.  Australia made a similar more detailedpresentation in 1999 in response to a checklist circulated by the Secretariat (see IP/C/W/117/Add.19
of 9 July 1999).
The aim of this document is to give an example of one national approach to the
implementation of the TRIPS Agreement provisions dealing with geographical indications (GIs)
(Articles 22 and 23).  We believe that information collected on national experiences will provide a
good grounding for our mandated discussion on extension.
We wish to emphasise that we do not intend to provide a model or blueprint for others.  Each
Member has individual domestic circumstances, including legal traditions and resource priorities, that
will determine the best system for that Member.  Indeed, there is, in our view, no one right way to
implement these provisions so long as the TRIPS Agreement obligations are met.
At the same time, with so many Members implementing protection for geographical
indications for the first time, there will no doubt be common experiences, difficulties and questions
that may be assisted through the exchange of information on domestic systems.
Australia has a regime in place to implement the obligations of Article 22 of the TRIPS
Agreement in relation to products generally, as well as specific protection relating to wine and spirits
which implements the Article 23 TRIPS obligations.
II. GEOGRAPHICAL INDICATIONS FOR ALL PRODUCTS
A. T
RADE PRACTICES ACT 1974
Australia meets its Article 22.2 obligation to provide the legal means to prevent the use of
geographical indications for any product against us e which misleads consumers or amounts to unfairIP/C/W/392
Page 2
competition primarily through the provisions of the Australian Trade Practices Act 1974.   For
example , the Trade Practices Act  includes prohibitions against:
- misleading or deceptive conduct (section 52);
- false or misleading representations concerning the place of origin of goods
(section 53 (eb));  and
- conduct liable to mislead the public as to the nature, manufacturing process, the
characteristics, the suitability for their purpose or the quantity of any goods
(section 55).
For further information about the Australian Trade Practices Act, see the various publications
contained on the website of the ACCC at www.accc.gov.au , in particular the publication entitled
"Country of Origin and the Trade Practices Act" (June 2001), which explains how the terms
"misleading and deceptive conduct" are interpreted as well as detailing the relevant criterion to make
a claim under the Act.
A variety of other legal mechanisms further support the protection of geographical indications
in Australia.  These include the common-law tort of  "passing off " and state fair trading legislation.
Further information on the common-law tort of "passing off" can be obtained by consulting Russell
Miller's "Annotated Guide to the Trade Practices Act."
The Australian Food Standards Code  also contains prohibitions on false or misleading
indications of the origin, character or place of manufacture of food.  Protection is also provided
through the so-called "truth" in labelling legislation, such as the Commerce Trade Descriptions Act
1905.
B. WHAT CAN AN AGGRIEVED PARTY DO?
In relation to geographical indications for all products, an aggrieved person can initiate an
action in the courts to protect a geographical indication (i.e., make use of the "legal means" available
in Australian law).  Thus, all persons - consumers and competitors alike - have the right to private
action and can seek remedies including:  damages;  injunctions;  and other orders.
Under the Trade Practices Act , legal proceedings involving protection of a GI can also be
taken by the Australian Competition and Consumer Commission (ACCC), which is responsible for
the administration of that Act.  The ACCC gives priority to cases involving, amongst other things,
significant public detriment and where action would have a significant deterrent effect.
In such cases, the ACCC would seek to recover the costs from the offending party and the
claimant would not bear any costs.  The ACCC is not a "paper tiger" and takes its responsibility for
enforcing compliance with the Trade Practices Act very seriously.
The ACCC has its headquarters in Canberra plus  regional offices and has a total staff of 509.
Since January 2000, the ACCC has logged 426 complaints in relation to sections 52 and 53 (eb)
relating to country/place of origin, with 69 investigations initiated.  The ACCC has forced companies
to re-label goods to avoid misleading consumers as to their origin - the ACCC has threatened or taken
action successfully in the Federal Court.  The ACCC has also promoted compliance through
developing specific industry guidelines, workshops, publications and an Internet presence.IP/C/W/392
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Australia has a common law system.  The fact that only some cases go to court obscures the
much larger number of cases where legal action is threatened and protection is secured by an informal
agreement or settlement.  This is a feature of the common law system.
C. CERTIFICATION TRADEMARKS
Australian trademark legislation can also be utilised to protect geographical indications as
certification trademarks.  The sole purpose of such trademarks, which distinguishes them from
ordinary trademarks, is that they indicate "quality, accuracy or other characteristics, including in the
case of goods, origin , material or mode of manufacture".
Certification trademarks have been used to provide protection in Australia by such agencies
as the Sri Lanka Tea Board to protect tea using the words "CEYLON TEA" with a picture of a lion;the Stilton Cheese Makers Association to protect cheese using the word "STILTON" (registered on
the provision of evidence), the Department of Foreign Trade and Ministry of Commerce in Thailand
to protect rice using the words "THAI HOM MALI RICE ORIGINATED IN THAILAND
DEPARTMENT OF TRADE" with a picture of a plant and Thai characters.
In relation to all products, the Australian regime is thus underpinned by the need to ensure
effective protection against misleading the public and unfair competition.  This is consistent with the
general approach to the protection of geographical indications enshrined in Article 22.2 of the TRIPS
Agreement.
Australia's regime of implementation reflects what we see as an appropriate balance between
the interests of consumers and producers as well as the appropriate level of resources devoted to GI
protection
III. WINE AND SPIRIT GEOGRAPHICAL INDICATIONS
In relation to wine geographical indications, Australia meets its Article 23.1 TRIPS
obligations through the Australian Wine and Brandy Corporation Act 1980  (administered by the
Australian Department of Agriculture, Fisheries and Forestry) (Note that the full text of the various
pieces of State and Federal legislation referred to in this response, including the Trade Practices Act
and the Australian Wine and Brandy Corporation Act, are readily available on the website of the
Australasian Legal Information Institute (http://www.austlii.edu.au).)
This Act establishes a "Register of Protected Names" for the protection of Australian and
foreign wine geographical indications.  For example, the Australian geographical indication "Adelaide
Hills" has been defined in accordance with this Act and appears on this Register.
To date, there are 97 Australian wine geographical indications contained on the register and
over 4,500 European wine geographical indications.
Wine  is the only product in Australia which receives GI protection through inclusion on such
a list (i.e., a register) pursuant to legislation containing criteria or determining whether protection
should be given.
Spirits  are protected under the Australian Food Standards Code through a general prohibition
on the use of a geographical indication for a spirit where the product concerned does not originate in
the place indicated by that geographical indication.  (Enforcement of the Code is the responsibility of
State governments).
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