Geographical Indications: Ready or not here they come
Article by Penny Catley and Deborah Kessell-Haak of intellectual property law firm Baldwins.
Last week, the Ministry of Business Innovation and Employment (MBIE) released the draft Geographic Indications (Wines and Spirits) Registration Regulations 2016 (“Regulations”) for review and comment. As the draft Regulations are reasonably extensive, this article gives an initial overview of some of the interesting aspects of the Regulations including the all-important proposed fee structure.
All applications or other information and documents required to be submitted to the Registrar of Geographical Indications (“Registrar”) must be filed electronically with limited scope for the Registrar to accept other forms of filing as required.
Applicants for a New Zealand GI will need to supply, among other things, information on:
•boundaries (descriptions and maps),;
•advice as to the particular reputation, qualities and characteristics that are ‘essentially attributable’ to the region;
•the historical provenance of the GI and the area to which it relates;
•whether the area has any cultural significance to the local community including Maori along with any steps the applicant has taken to ensure that use of the GI will not be offensive to these parties;
•the degree of discreetness or homogeneity of the GI (geology, geography and climate); and
•any other information the applicant considers would be relevant to the assessment of the GI.
Applicants for a foreign GI will have to supply, among other things:
•full details of the basis of the foreign GI in the country of origin including registration numbers (if any);
•country of origin;
•a statement that the GI is still protected in the country of origin;
•any necessary translations or transliterations; and
•copies of any associated regulations, rules or other documents that specify the protection afforded to the GI in the country of origin.
The Registrar must give an applicant a minimum of 6 months to respond to any issues raised during examination of the GI. If the application is still not in order after the initial response, the Registrar can issue a further notice and specify a new deadline.
Either the Registrar (on their own account) or ‘interested parties’ can apply to remove the GI or alter the GI itself and any associated conditions, and/or boundaries. In addition to the standard pre-grant opposition, therefore, there is an opportunity for interested parties to oppose a notified proposal to remove or alter the GI.
It is proposed that a GI registration in New Zealand will expire. The GI may, however, be renewed indefinitely on payment of the renewal fees. The current GI Amendment Bill proposes a 10 year renewal period. In the discussion document, however, MBIE has canvassed three possible renewal mechanisms one of which reduces the term of registration of a GI to 5 years as follows:
Ten Year Renewal
Application fee NZD5,000
Renewal fee (every 10 years) NZD2,500
Five Year Renewal
Application fee NZD3,500
Renewal fee (every 5 years) NZD1,750
Ten Year Renewal Staggered Renewal Fees
Application fee NZD5,000
First renewal fee (every 5 years) NZD2,500
Subsequent renewal fees (every 10 years)NZD500
It is proposed that the costs associated with carrying out the various functions of the Registrar (such as examination, acceptance, advertisement/publication of the application and registration) will be covered by the application fee.
Oppositions and applications for removal or alteration of a GI will, incur additional fees given the likely expense associated with providing the systems and personnel required to properly manage such procedures; including the likely expense associated with convening the expert Geographical Indications Committee to assist the Registrar.
Hearing fee NZD1,700
Notices of opposition (filing fee) NZD700
Applications to remove or alter a registered GI (filing fee) NZD1,000
Call for Submissions
Public submissions on the Regulations close on 29 July 2016. The consultation documents and information on how to make submissions can be found on the MBIE website.
We strongly encourage all potential stakeholders to make your voices heard by either filing your own submissions on some or all of the issues raised. Alternatively, let us know your views and we will incorporate them into our response.