Information for Review under TRIPS Art. 24.2 (Checklist of Questions on GIs) - View details of the document

New Zealand

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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.

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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.

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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.

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.

See response to questions 1-3 above.

[Answer 1: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 2: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 3: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

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 the Geographical 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.

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 under the Geographical Indications Act. In developing these Regulations, New Zealand is, of course, mindful of international obligations under the WTO Agreements.

[Answer 1: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 2: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 3: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

See the response to question 4 under I above.

[Answer 4: 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.]

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.

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.

The criteria will be prescribed by regulations that are currently being drafted.

Not applicable.

The Trade Marks Act. See the response to question 1 above.

[Answer 1: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

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.

[Answer 10: The criteria will be prescribed by regulations that are currently being drafted.]

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 the conditions if any applying to the geographical indication. A condition may specify when a homonymous geographical indication can be used.

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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.

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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.

- 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.

[Answer 8: 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.]

See the response to question 14 under I above.

[Answer 14: 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 the conditions if any applying to the geographical indication. A condition may specify when a homonymous geographical indication can be used.]

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.

[Answer 15: 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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.]

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.

[Answer 15: 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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.]

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 indication inside 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.

[Answer 15: 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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.]

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: • 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.

See the response to question 10 above.

[Answer 10: The criteria will be prescribed by regulations that are currently being drafted.]

See the response to question 10 above.

[Answer 10: The criteria will be prescribed by regulations that are currently being drafted.]

See the response to question 10 above.

[Answer 10: The criteria will be prescribed by regulations that are currently being drafted.]

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.

[Answer 1: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 2: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 3: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

In relation to a geographical indication within New Zealand, any person who is dissatisfied with a determination may apply to the New Zealand Geographic Board for a review of the determination of a geographical indication. This application may be made any time within 15 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. 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.

See the response to question 25 above.

[Answer 25: In relation to a geographical indication within New Zealand, any person who is dissatisfied with a determination may apply to the New Zealand Geographic Board for a review of the determination of a geographical indication. This application may be made any time within 15 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. 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.]

See the response to question 15 above.

[Answer 15: 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 or multilateral agreement requiring the protection of geographical indications. Although there is no specific prohibition against the registration of geographical indications not protected in the country of origin, in practice, as New Zealand will only register foreign geographical indications notified to it under a bilateral or multilateral agreement, it is unlikely that geographical indications would be registered which are not protected in the country of origin.]

Indefinitely. However, an application may be made to have the geographical indication altered or removed from the Register of Protected Geographical Indications.

Not applicable. See the response to question 28 above.

[Answer 28: Indefinitely. However, an application may be made to have the geographical indication altered or removed from the Register of Protected Geographical Indications.]

No. Protection of the geographical indication in relation to the specified goods is granted through registration.

Not applicable.

Not applicable.

Not applicable.

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 basis of that determination.

Any interested party may make an application for the removal or amendment of a registered domestic geographical indication.

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.

See the response to question 36 above.

[Answer 36: 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.]

Not applicable.

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 injunction restraining the offender from using the protected geographical indication in a misleading or deceptive manner.

See the response to question 30 above.

[Answer 30: No. Protection of the geographical indication in relation to the specified goods is granted through registration.]

Not applicable.

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 by someone in the geographical origin protected by the geographical indication it is unlikely that a geographical indication could be licensed.

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, or being produced, before the registration of the protected geographical indication, or the goods were declared 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.

See the responses to questions 43 above and 46 below.

[Answer 43: 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, or being produced, before the registration of the protected geographical indication, or the goods were declared 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.]

[Answer 46: 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 the same 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 protected geographical indication as a trademark would be considered to be covered by either or both of these provisions.]

See the responses to questions 43 above and 46 below.

[Answer 43: 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, or being produced, before the registration of the protected geographical indication, or the goods were declared 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.]

[Answer 46: 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 the same 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 protected geographical indication as a trademark would be considered to be covered by either or both of these provisions.]

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 the same 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 protected geographical indication as a trademark would be considered to be covered by either or both of these provisions.

See the response to question 46 under I above.

[Answer 46: 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 the same 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 protected geographical indication as a trademark would be considered to be covered by either or both of these provisions.]

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 may apply 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.

[Answer 1: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 2: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 3: 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 Act states 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 of geographical 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 determinations under the Act must be published, criteria to which a Geographical Indications Committee must have regard in determining a geographical indication and any fees payable. The Geographical Indications Regulations are currently being drafted.]

[Answer 4: 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.]

Any interested party has the right to enforce a geographical indication.

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.

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 inviting written 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 determine. 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.

Enforcement of a geographical indication is by civil action.

No.

No.