WORLD TRADE
ORGANIZATIONIP/C/W/189
22 June 2000
(00-2534)
Council for Trade-Related Aspects
of Intellectual Property RightsOriginal:  English
NEW ZEALAND’S SYSTEM OF PROTECTION FOR GEOGRAPHICAL INDICATIONS
AND THE MULTILATERAL NOTIFICATION AND REGISTRATION SYSTEM
FOR GEOGRAPHICAL INDICATIONS UNDER ARTICLE 23.4
OF THE TRIPS AGREEMENT
Communication from New Zealand
In a communication from its Permanent Mission, dated 20 June 2000, New Zealand has
submitted the following paper that it had recently developed with a view to further contributing to theTRIPS Council's discussion under Article 23.4 on the most appropriate form and scope of a
multilateral registration and notification system for wine geographical indications, with the request
that it be circulated to Members.
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I. INTRODUCTION
1. Article 23.4 of the TRIPS Agreement provides for negotiations in the TRIPS Council
"concerning the establishment of a multilateral system of notification and registration of geographical
indications for wine"
1 and, as part of the Council's discussions on this notification and registration
system, two proposals have been submitted to the Council thus far.  The first is from the EuropeanCommunities and their member States
2, whilst the second is from Canada, Chile, Japan and the
United States3 ("the collective proposal").
2. At the heart of the collective proposal is a recognition that the notification and registration
system should simply facilitate protection, be a transparent information tool, be voluntary,accommodate different national approaches to geographical indication protection, be administratively
simple and cost effective and, most importantly, not create an additional raft of legal obligations on
top of those already contained in the TRIPS Agreement.
3. New Zealand has generally supported the collective proposal as it more fully accords with the
letter and intent of Article 23.4, as well as the fundamental principle contained in Article 1 of the
TRIPS Agreement that "Members shall be free to determine the appropriate method of implementing
the provisions of this Agreement within their own legal system and practice".
                                                     
1 Whilst the purpose of this system is to "facilitate the protection of geographical indications for wine",
the Singapore Ministerial Conference provided that the mandate for the Council could be expanded to
preliminary work on "spirits" as well.
2 IP/C/W/107.
3 IP/C/W/133/Rev.1.IP/C/W/189
Page 2
4. It should also be noted that the concepts on which the collective proposal is built are
consistent and mutually supportive of those which have shaped the development of New Zealand's
system of protection for geographical indications.4
II. OBJECTIVE
5. This paper is designed as a contribution to the Council's discussions under Article 23.4 on the
most appropriate form and scope of a multilateral notification and registration system for wine
geographical indications.  This paper will further emphasize the workability of the collective proposal,
particularly its ability to accommodate different national approaches to geographical indication
protection, by using the New Zealand system of pr otecting geographical indications as an example.
III. THE NEW ZEALAND SYSTEM FOR THE PROTECTION OF GEOGRAPHICAL
INDICATIONS
6. New Zealand has chosen a multifaceted regime for the protection of geographical indications
to fulfil its TRIPS obligations.  This regime encompasses:5
(a) The Fair Trading Act 1986 , which states that no person shall, in trade, engage in
conduct that is misleading or deceptive or is likely to mislead or deceive.
(b) The Trade Marks Act 1953 , which prevents the registration of a trademark which
would be likely to deceive or cause confusion.
(c) The common law action of passing off, which prevents the use of misrepresentations
in the course of trade which harm, or have the potential to harm, the goodwill of theproduct of another.
(d) The Geographical Indications Act 1994 , which will provide a registration system for
geographical indications in relation to specified goods and provide for the protection
of those geographical indications that have been registered under the Act, as well as
for foreign geographical indications which have been notified under the Act.
6
IV. THE NEW ZEALAND SYSTEM AND THE COLLECTIVE PROPOSAL
(a) Voluntary Registration
7. The protection provided in New Zealand under the Fair Trading Act, the Trade Marks Act
and the action of passing off involves no requirement of compulsory registration under the
Geographical Indications Act.
8. This accords with the principle of the collective proposal under which participation in the
proposed notification and registration system will be  entirely voluntary.  A failure by a WTO Member
to participate in the proposed notification process would not detract from the full protection available
                                                     
4 As required under Section 3 of the TRIPS Agreement.  A description of New Zealand’s system was
submitted as part of the Review under Article 24.2 concerning the application of the provisions of the section of
the TRIPS Agreement on geographical indications and can be found in document IP/C/W/117/Add.12.
5 Please refer to document IP/C/W/117/Add.12 for further details of the New Zealand regime.
6 This Act is linked to the Fair Trading Act an d establishes that a breach of the Geographical
Indications Act is deemed also to be a breach of the Fair Trading Act and is subject to the penalties of that Act.Work is currently under way to bring this Act into force.  It is important to note, however, that (a) to (c) above
provide TRIPS-level protection and recognition in New Zealand for both domestic and foreign geographical
indications.  The Geographical Indications Act is an additional measure to provide registration for these terms.IP/C/W/189
Page 3
under the TRIPS Agreement for those geographical indications that are protected, but not registered,
in accordance with that Member's national legislation.
(b) Accommodation of a Variety of Systems
9. As can be seen from paragraph 6 above, the regime for the protection of geographical
indications in New Zealand is based on several co-existing systems contained in various Acts and a
common law action.  The TRIPS Agreement recognizes this type of flexibility in implementation of
the standards set out in the Agreement, in both Article 1 (see paragraph 3 above) and in Article 23.1.7
10. Responses submitted under the Article 24.2 review initiated by the TRIPS Council in 1998
indicate that WTO Members have satisfied their obligations under the TRIPS Agreement in relation tothe protection of geographical indications through a variety of TRIPS-consistent systems.  This is a
reflection that, while the TRIPS Agreement sets  benchmark standards for intellectual property
protection and enforcement, it does not prescrib e mechanisms for implemen tation of these standards .
This approach recognizes that harmonized levels  of protection do not necessarily require harmonized
legislation - the costs of which may be undesirably high.
11. The collective proposal, by not attempting to impose additional unified criteria at the
international level for international registration is flexible enough to facilitate protection of
geographical indications and accommodate differing national systems in their current form.
(c) Registration of Foreign Geographical Indications
12. Whilst the New Zealand regime for the protection of foreign geographical indications does
not involve compulsory registration under the Geog raphical Indications Act (see paragraph 7 above),
it should be noted that the Geographical Indications Act allows for the registration of those foreigngeographical indications which have been submitted to the Register of Protected Geographical
Indications pursuant to a multilateral or bilateral agreement to which New Zealand is a party.  In so
doing, New Zealand retains the ability to decide which foreign geographical indications are eligible
for registration in New Zealand through its decision to participate in these agreements.
13. Under the collective proposal, WTO Members will retain the power to decide, based upon the
relevant criteria of their own jurisdiction, whether or not it is appropriate to protect a foreigngeographical indication in their own jurisdiction.  Members would agree to refer to the list of
geographical indications notified by other Members in deciding whether to extend protection to
geographical indications "in accordance with their national legislation".  Indeed, the WTO list would
be important to New Zealand's consideration of the bilateral and multilateral agreements it may enter,
and by extension, the foreign geographical indications that are formally registered under theGeographical Indications Act.
14. It is, however, important to recall that, even if foreign geographical indications are not
considered eligible for registration, Members will still be required to protect them under the TRIPS
Agreement.  In New Zealand, for example, the use of the term "Champagne" was restricted through acourt action for "passing off", even though the term was not registered as a geographical indication in
New Zealand.
8
                                                     
7 Article 23.1 establishes that "Each member shall provide the legal means for interested parties to
prevent the use of a geographical indication...".
8 Wineworths Group Ltd. v Comité Interprofessionel du Vin de Champagne [1992] 2 NZLR 327.IP/C/W/189
Page 4
(d) Legal Effects Under National Legislation
15. The collective proposal would recognize the legitimacy of Members' existing national laws.
Members' processes for defining, recognizing and registering geographical indications would not be
supplanted.  If a geographical indication were protected under a Member's system of protection, thenit would be notifiable to the WTO.  However, once notified to the WTO, the Secretariat or Members
would have no mandate on which to refuse or oppose a listing for a geographical indication which is
accorded protection in a Member's territory under that Member's laws.
16. All of this means that the initiation of opposition proceedings remains at the national level,
within the context of the national legislation under which the geographical indication was originally
granted protection, and not through a sui generis  dispute system at the supranational level.  The
protection of the term "Champagne" in New Zeala nd (see paragraph 14 above) is one example of how
this system would work.  Of course, more generall y, if a Member's legislation generally were not
considered to provide the protection required by the TRIPS Agreement, the standard recourse under
the WTO Dispute Settlement Understanding would remain.
17. In New Zealand, the preservation of the ability to apply national law to the registration of
geographical indications within New Zealand is funda mental.  For example, due to possible conflicts
with trademarks and the existence of homonymous geographical indications, it is important that
registration of geographical indications be able to be undertaken on a case-by-case basis, if necessary,
so that the relevant provisions of the TRIPS Agreement concerning these situations can be respected.
18. A system which provided automatic protection in all WTO Members' territories upon
registration on the WTO list, would undermine this ability to conduct case-by-case consideration prior
to national recognition of a foreign geographical indication.  Also, because the TRIPS Agreement is
one of minimum standards, the registration protecti on given to geographical indications in other
Members may be of a higher level than New Zealand feels is appropriate in the context of its own
legislation and its national trade policy approach in this area .
(e) Enforcement
19. Intellectual property right enforcement in New Zealand is based on a policy that encourages
individual right holders to enforce their own rights.  This is consistent with Article 23.1 of the TRIPSAgreement which states that "Each member shall provide the legal means for interested parties  to
prevent use of a geographical indication..." (emphasis added).  The collective proposal maintains the
right of private right holders by preserving their ability to initiate opposition proceedings at the
domestic level and by not mandating opposition proceedings at the supranational level which are open
to Member governments only.
(f) Costs
20. The New Zealand registration system under the Geographical Indications Act was designed to
ensure that all costs associated with such an application would be placed on the applicant who would
be one of those to reap the benefit from such a registration and the consequent protection afforded by
the Act .  By maintaining the onus for registration decisions and opposing proceedings at the national
level, the collective proposal also attempts to keep any administrative resource implications of the
multilateral register to a reasonable level for both the Secretariat and Members.  The existence of an
information register at the multilateral level may in fact ease resource constraints at the national level
by assisting decisions on registration and protection decisions.IP/C/W/189
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V. CONCLUSION
21. As indicated above, New Zealand is generally supportive of the collective proposal, because it
better accords to the letter and intent of Article 23.4 and with the fundamental principle contained in
Article 1 of the TRIPS Agreement that "Members shall be free to determine the appropriate method of
implementing the provisions of this Agreement within their own legal system and practice".  It shouldalso be noted that the concepts on which the collective proposal is built are consistent and mutually
supportive of those which have shaped the devel opment of New Zealand's system of protection for
geographical indications.
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