Previous Issues

Geography in a Label or Product Name

Published: 10 Mar 2006

By Joe Lederman
© FoodLegal, March 2006.

There are different laws that may apply specifically when a product refers to a particular geographic location.

'TRIPS'

Under the international treaties by which Australia is a signatory to membership of the World Trade Organisation (‘WTO’), Australia is bound by the Agreement on Trade-Related Aspects of Intellectual Property Rights (‘TRIPS’). TRIPS is a WTO agreement which sets out the minimum standards with which member states must comply to protect intellectual property. Article 22 of the agreement requires that countries shall provide legal means to prevent the use of a sign or presentation suggesting that goods come from an area different from their actual origin. Australia fulfills this requirement through the Trade Practices Act 1974, the Trade Marks Act 1995 and the Australian Wine and Brandy Corporation Act 1980.

Where an Australian food business has a geographical indicator in its name, a number of provisions can apply to prevent it from selling products not from that geographical area.

The following are some of the potential legal areas of contention:

Trade Practices Act Provisions

The Trade Practices Act s52 prohibits misleading and deceptive conduct. Under s53(eb), false representations as to the place of origin of goods are prohibited. The corporation may also be penalized under s75AZC of the Trade Practices Act, which makes false representations as to the place of origin an offence of strict liability with a penalty of 10,000 units ($1,100,000).

Under s65AB, a representation as to the place of origin will be legitimate if the goods have been ‘substantially transformed’ in that place; and 50% or more of the cost of producing or manufacturing the goods is attributable to processes that occurred there. Substantial transformation refers to a fundamental change in the form, appearance or nature of the goods, such that they are new and different goods from those existing before the change (s65AE(1)).

Trade Marks Act Provisions

Under the Trade Marks Act s61(1)(a) registration may be opposed if it contains a geographical indicator of a country other than the origin. Section 43 provides that registration must be rejected if its use is likely to deceive or cause confusion. An already registered trademark may be cancelled for either of these grounds (s88).

Conclusion

An Australian food producer selling products from a different geographical region than that indicated from their brand name risks breaching several laws. These include the potential offence of misleading and deceptive conduct, or false representations under the Trade Practices Act. In addition, a brand may have its trade mark registration jeopardized by potential cancellation under the Trade Marks Act.