Trade Mark containing Geographical Indication

One of the most complex and absolute of these barriers is found in Section 20 of New Zealand’s Trade Marks Act 2002. This section prevents the registration of a trade mark if it contains a Geographical Indication (GI) and its use is deemed “likely to deceive or confuse” the public.

A GI is a sign used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. Think “Champagne,” “Scotch Whisky,” or “Marlborough.” An objection under Section 20 can be fatal to an application.

The First Test – Does Your Mark “Contain” a GI?

The first question an examiner will ask is whether your trade mark “contains” a Geographical Indication. This is a very literal test, and the rules are precise: to be caught by Section 20, your trade mark must contain the whole of the GI.

This rule creates a critical distinction. A trade mark that includes only part of a GI, or an acronym or abbreviation for it, will not be blocked by this specific section.

This is a key part of our initial registrability analysis. For example “New Zealand” and “Waiheke Island” are both registered New Zealand GIs. A trade mark application for NZ Wines or Waiheke Wines would not be blocked by Section 20, because “NZ” is an acronym and “Waiheke” is only part of the full GI “Waiheke Island”. However, a logo containing the words “Marlborough New Zealand“ (as shown in the IPONZ manual) would be caught, as it contains the full text of two registered GIs.

This same logic applies to foreign GIs. Following the New Zealand-European Union Free Trade Agreement, a large number of EU GIs are now registered in New Zealand. “Aceto Balsamico di Modena” is a registered EU FTA GI. A mark that includes the full phrase “Aceto Balsamico di Modena” will be examined under Section 20. A mark that only contains the word “Balsamico” or “Aceto” will not be.

Our pre-filing search is not limited to just the trade mark register. We meticulously cross-reference your proposed mark against the registers of New Zealand GIs, foreign GIs, and EU FTA GIs to provide a comprehensive risk assessment.

The Second Test – Does Your Specification Create a Conflict?

If your mark does contain a full GI, the next step is to analyze your specification of goods. An objection will only be raised if your specification “includes goods covered by the GI”.

This is where many applications inadvertently fail. The “goods covered by the GI” can be a broad category. If your specification includes a general term that encompasses the specific GI product, it will be considered a conflict.

This “broad term” trap is a significant risk as, if your mark contains a GI for “cheeses” (e.g., “Jabugo”), a specification for “dairy products” or “milk products” in Class 29 will be flagged, because “cheese” is a subset of those terms. A specification for “butter” or “meat products” would be fine. Also, if your mark contains a GI for “wines” (e.g., “Bordeaux”), a specification for “alcoholic beverages” in Class 33 will be flagged, as “wine” is a subset of that term.

That said, a specification for “non-alcoholic beverages” in Class 32 will also be flagged as a conflict for a “wine” GI. This is because “de-alcoholised wine” is still considered wine and falls under this broad term.

As part of our service, we draft your specification with surgical precision. We avoid these high-risk general terms and use specific, accurate descriptions of your goods, navigating around potential GI conflicts from the very beginning.

Refusal – When is a Conflict “Likely to Deceive”?

If your mark contains a GI (Test 1) and your specification covers those goods (Test 2), the examiner will then determine if the mark is “likely to deceive or confuse”. How this is assessed depends on whether the GI is registered or not.

The GI is Registered in New Zealand

This is the most straightforward refusal. If your mark contains a registered GI (like “Marlborough” or “Aceto Balsamico di Modena”) and your specification includes those goods (like “wine” or “vinegar”), deception is assumed.

It is not clear to the public that your goods actually originate from that place and meet the GI’s standards. In this case, the relative filing dates of your trade mark and the GI do not matter. The examiner will raise a Section 20(1) objection, and the burden is on you to fix it.

The GI is Not Yet Registered in New Zealand

This is a more complex situation. The GI may be a pending application (for a NZ or foreign GI) or a proposed EU FTA GI. Here, the examiner must apply a third test, i.e. priority.

An objection will only be raised if the GI’s deemed registration date is earlier than your trade mark’s deemed registration date. Our team’s analysis includes monitoring these pending GIs and their priority dates (which can be their application date or public notice date) to protect you from future, as-yet-unregistered rights.

How do we overcome a section 20 objection?

Receiving a Section 20 objection is a serious barrier, but it is one our firm is highly experienced in overcoming. We have three primary strategies.

Specification Amendment

This is the most common and effective solution. We do not have to abandon the mark; we simply file an amendment to the specification to clarify that your goods do originate from the GI’s location and meet its standards.

To ensure compliance, we use the specific wording recommended by IPONZ. This demonstrates expertise and resolves the objection efficiently. For example, we would amend the specification to read:

• “Waiheke Island” (GI) wines
• “Scotch Whisky” (GI) spirits
• “Aceto Balsamico di Modena” (GI) vinegar

If your mark contains multiple GIs (e.g., “Marlborough New Zealand”), we can employ a more efficient solution. We only need to amend the specification to reference the most specific GI. In this case, amending the specification to “Marlborough” (GI) wine is sufficient to overcome the objection for both GIs.

Deleting the Conflicting Goods

In many cases, the simplest path to registration is to remove the conflict. Our firm can file to delete the problematic goods from your specification, leaving the non-conflicting goods intact.

Let’s say, your mark is “MARLBOROUGH” (a wine GI). Your specification is for “wine, vodka, whiskey”. The objection is only against “wine”. We file an amendment to change the specification to “vodka, whiskey”. The objection is resolved, and your mark can proceed for your other goods.

Again, let’s say, your mark is “MARLBOROUGH” and your specification is for “non-alcoholic beverages” (the broad term conflict). We file to amend the specification to specific, non-conflicting goods like “grape juice; aerated water”. This clarifies you are not selling de-alcoholised wine and resolves the objection.

Proving Honest Concurrent Use

In rare situations, we can make a complex, evidence-based argument under Section 20(2) of the Act. If you can prove “honest and longstanding use” of your trade mark that began before the GI’s deemed registration date, the Commissioner may allow your registration to proceed.

This is a high-level legal argument that our team will assess on a case-by-case basis. A special provision for this exists for the term “Gruyère.” If a business can prove good faith use on cheese products for at least 5 years before 1 May 2024, we can argue for registration. However, this often comes with a condition: we must agree that the mark will always be used with a “legible and visible indication of the geographical origin of the goods”.

Why work with us?

Geographical Indication law creates an absolute barrier to registration that can easily trap an unguided applicant. A standard trade mark search that only looks for other trade marks is dangerously incomplete. It will not identify these GI conflicts.

Our firm’s comprehensive registrability analysis includes a deep dive into all registered and pending GIs, a technical review of your specification wording to avoid “broad term” traps, and a clear strategy for overcoming any objections that may arise. Before you invest in your next brand, contact our team to ensure its path to registration is clear. Contact us today for a free consultation.