Taking the Pisco: Protecting regional products

Regional communities have always been the backbone of the agricultural sector. We recognise the names of many of these communities for the unique characteristics of their environment and production process (e.g., Champagne, Gouda, or Prosciutto di Parma).

When such a reputation entrenches itself in a geographic region, this is known as a Geographical Indication (‘GI’) for that product.

In Australia, the recognition of a GI is not something we have traditionally held as being of importance or worth protecting. This position may well be due to us being a new country without the history and culture of our European friends.

However, discussion of GIs has heated up between Australia and the European Union ('EU') as intellectual property protection is a focus of the forthcoming Australia-European Union Free Trade Agreement (‘FTA’).

The EU is Australia’s second largest trading partner, third largest export destination, and second largest services market. Accordingly, the resulting FTA will likely see a drastic increase in the flow of goods and services between Australia and the EU.

The controversy regarding intellectual property is that the EU wants Australia to provide greater protection for EU GIs in Australia. This protection could require the rebranding of numerous products sold by Australian businesses.

An example of this was seen not long ago with the use of the word ‘Champagne’. Additionally, Gouda (pronounced 'How-da' by Nederlanders) is being discounted in your local store given the soon to be signed FTA that will likely result in Gouda Holland becoming a GI and therefore unable to be used unless the product complies with certain requirements. As one would imagine, extending this to other products produced by Australian farmers concerns agriculturalists.

Farmers with hereditary links to countries such as Greece, Italy, and Germany who have been manufacturing products in Australia in the same way as done in their ancestral homelands, are concerned that they may not be able to call their products by names such as Prosecco, Nero d’Avolal, or Dolcetto.

Are Australian producers taking the Pisco?

Harman’s Estate, based in Margaret River in Western Australia, recently caused a furore by releasing a range of Pisco-branded drinks produced in Australia. Pisco is a fruit spirit traditionally produced in Peru, from the fermentation and distillation of grapes.

The Peruvian Embassy sent a cease-and-desist letter, after which the winery doubled-down by claiming that Pisco is not a GI. The reason provided is that Pisco originates from both Peru and Chile, so it cannot receive protection as a GI. This reasoning is unlikely to get up because a GI does not necessarily exclude the possibility of an association with more than one location. Given that the European Commission accepts the Pisco GI for products originating from both Peru and Chile, the Australia-EU FTA may well result in Harman’s Estate having to pour their Pisco efforts down the drain. In that event, they really will have been Pisco-ing money up the wall.

Protecting your GIs in Australia

In Australia, the main way to protect your GI if it isn’t legislated by the government is by registering a Certification trade mark with IP Australia.

Certification trade marks differ from typical trade marks in that there are specific criteria for acceptance. In particular, applicants must submit a set of rules for the mark’s use and must satisfy IP Australia that the registering organisation is capable of effectively overseeing its use.

Historical evidence and reputation are hugely important factors in successfully registering a GI in Australia, and these must be maintained to ensure continued protection. The deregistration of the Bohemia and Bohemia Crystal marks shows that a GI is not forever, and a concerted effort needs to go into maintaining their distinctiveness.

A version of this article was first published in WTR Daily by World Trademark Review.