Recognising the Indications of Geography
A recent decision by Justice Bennett concerning the use of the word ‘Bavaria’ in relation to beer has provided some interesting insights into the extent of protection provided for geographical indications under our trade mark legislation. The applicant, Bavaria NV, is a family-owned company incorporated in the Netherlands that makes beer, among other beverages. It had unsuccessfully sought registration of its trade mark for beer and appealed to the Federal Court when its application was denied as the result of an opposition hearing. The trade mark included the word ‘Bavaria’ which was displayed prominently within a device mark and which also contained other words, ‘Holland Beer’.
The successful opponent of the original application for registration was the Bavarian Brewery Association which represents the interests of well over 200 Bavarian breweries, some of which have been in business for centuries. Its opposition to registration was based on numerous grounds as is the custom in trade mark practice but it is the discussion about geographical indications and the application of Section 61 of the Trade Marks Act 1995 (Cth) which is the focus of this posting.
Section 61 provides that the registration of a trade mark may be opposed on the ground that the trade mark contains or consists of a sign that is a geographical indication for goods. Section 6 defines a geographical indication as a ‘sign recognised [in another country] as a sign indicating that the goods originated in that country, region or locality and have a quality, reputation or other characteristic attributable to their geographical origin.’
The expression ‘Bayerisches Bier’ which translates to Bavarian Beer is registered as a protected geographical indication (PGI) under the relevant EC regulations. As such it is recognised as the name of a region used to describe an agricultural product or foodstuff originating in that region and which possesses a specific, quality, reputation or other characteristic attributable to that geographical origin. The registration for a PGI can be contrasted with registration for Protected Designation of Origin (PDO) which requires that the goods have a quality or characteristic which is essentially or exclusively due to a particular geographical environment with its inherent natural and human factors.
There were two key points in the judgment that affect the application of Section 61. The first surrounds the use of the word ‘recognised’ in the definition of a geographical indication. Bennet J held that long term use is not enough in itself to constitute recognition and that the recognition would have to be formalised in some way in the relevant country by, for example, registration under some system of registration for geographical indication. Consequently, the expression ‘Bayerisches Bier’ is a geographical indication because it is registered pursuant to the EC regulations as a PGI and those regulations only permit registration when the necessary connection between the name of the region and the specific characteristic of the goods attributable to that geographical region has been demonstrated. Long term use short of formal recognition would not be sufficient although the judgment leaves open the possibility that recognition might flow from a court decision.
This view has particular significance for those countries that do not have systems of registration of geographical indications. In particular, one of the reasons often put forward for protecting geographical indications in international fora is that it allows developing countries to gain protection for the names of their agricultural products. The catch is that it seems they will have to have in place a system of registration of their geographical indications. In turn, this requires devotion of scare resources to the creation of a registration system when those same countries may well have other, more pressing priorities. But because they have not devoted as many resources to the issue.
The second key point of the decision is that it is not enough to demonstrate that the sign is substantially identical with or deceptively similar to the geographical indication in question. Those words which appear in other sections of the legislation such as Section 120 and Section 44 do not appear in Section 61. In other words, the sign in question and the geographical indication must be identical. Bennett J pointed out that ‘Bavarian Beer’ is not the same as Bavaria, even when that word appears on a beer bottle. For that reason alone, Section 61 did not apply.
The end result is that Section 61 may not have as many teeth in it as some may have thought. No doubt the EC will be quick to point out the ‘deficiencies’ in our legislation in the near future.
