90. The representative of New Zealand said that, regarding the consequences of registrations, there was a wide range of views among Members ranging from, at one end of the spectrum, the view that the register should have no legal effects to, at the other end of the spectrum, a proposal which would have draconian legal effects that would not facilitate but substantially increase protection. Such legal effects were draconian because they would reverse a fundamental principle of New Zealand law, namely the burden of proof, and would give legal status to an IPR from any Member that registered a GI on such a register, which was clearly inconsistent with the principle of territoriality. Such a register would be unprecedented as it went further than the Madrid Protocol in relation to trademarks or the Patent Cooperation Treaty. Both treaties reduced the costs of seeking protection in all countries, but the examination process was still undertaken in each country under its domestic law.
91. Turning to the joint proposal, he rejected the EC's description of it as an illusion of facilitation. The joint proposal fell between the two positions on the spectrum in that it provided for consequences of registration that facilitated protection in accordance with the mandate. If adopted, it would provide real and substantive benefits to GI right holders. In New Zealand, for instance, wines and spirits GIs were protected principally by the common law tort of "passing off", and legislative requirements in the Trade Marks Act and Fair Trading Act. According to expert advice received by his delegation, if the joint proposal were to be implemented in New Zealand, GI rights holders could use a registration under a joint proposal-type register to establish their case in a court action, as it would help right holders to show that it had a reputation in the particular name.
92. In relation to trademarks, under the New Zealand Trade Marks Act an examiner had to satisfy himself that there were no grounds preventing the registration of the trademark, e.g., if the trademarks were non-distinctive. Implementation of the joint proposal in New Zealand would involve including in the trademark examination process a requirement for the examiner to consult the register, to assess whether the trademark application contained a registered GI, and then to consider its eligibility for trademark registration with that information in mind. If the trademark did consist of or contained a wine or spirit GI appearing on the international register, that would be highly relevant in assessing whether it was non-distinctive and therefore not registrable. Furthermore, the examination record obtainable under New Zealand's legislation on access to official information would show if the requirement to consult the register had not been complied with and this would constitute grounds for review of the decision to register the trademark. Contrary to the views that the joint proposal had no legal effect was an illusion or would make no difference, the joint proposal would therefore clearly facilitate the protection of GIs in New Zealand by making consolidated information on geographical terms available to examiners. It would have a real effect in New Zealand as it would help prevent geographical indications from being inappropriately registered as trademarks by specifically requiring consultation of the database in the examination process. A joint proposal-style register could also avoid the need for GI right holders to spend time and money lodging an opposition to an accepted application on the basis of non-distinctiveness. Therefore, it would also be of real benefit to GI right holders.
