A number of restrictions apply to the use of registered geographical indications in New Zealand. These provisions are outlined in the Geographical Indications Registration Act 2006 (“the Act”).
- Sections 21 to 26 of the Act outline restrictions on the use of registered New Zealand and foreign GIs for wines and spirits.
- Sections 73 to 78 of the Act outline restrictions on the use of GIs registered under the New Zealand - European Union Free Trade Agreement.
Any person who has an interest in upholding the restrictions on the use of a registered GI (an “interested person”) may take civil legal action against a person infringing a registered GI. Any person may also report a misuse of registered GIs to the Ministry for Primary Industries (MPI).
Civil legal action
Any interested person may take civil legal action against any person infringing a registered GI in the High Court, to stop that person infringing the GI. Infringement can occur where the GI is used on either the relevant goods themselves, or in relation to any marketing or promotion material related to the sale of those goods.
Where the court determines that a person is, or has been, infringing a registered GI, it may order one or more of the following remedies to address that infringement:
- an injunction requiring the person to stop infringing.
- the payment of damages or account of profits arising from any infringing use.
- the erasure or removal of the infringing GI from infringing goods and infringing material. If this is not reasonably practical to do, the infringing goods or infringing material may be destroyed.
- the delivery up and disposal of infringing goods, infringing material and infringing objects.
Any person considering taking civil legal action should seek the advice of a lawyer beforehand.
Border protection notices
If you consider that goods bearing an infringing GI are being either exported or imported into New Zealand, you can lodge a notice with the New Zealand Customs Service (“Customs”) seeking to have those goods temporarily detained at the border. You can only do this if you are an interested person.
Goods will only be detained for 10 days to enable you to commence civil legal action against the importer / exporter for infringement of the GI. If the court determines that the goods do infringe a registered GI, it may order the infringing goods to be destroyed at the importer’s / exporter’s expense.
Customs may require a person providing notice to provide security and/or indemnity for their costs in detaining suspected infringing goods. Please note that Customs’ detention authority only applies to commercial shipments crossing the border – this does not apply to goods imported or exported by a person for their own private use.
Administrative enforcement by MPI
If you believe that someone is infringing a registered GI in relation to their goods, please contact MPI in relation to the alleged misuse or infringement. This also applies where the registered GI is used as part of marketing or promotional material.
Ministry of Primary Industries
MPI will review your complaint and may assign it to a GI officer to investigate. Depending on the results, MPI will then determine whether or not to issue a notice of direction to the infringer requiring them to stop further use of the GI, remove infringing goods from channels of commerce and/or remove the GI from any promotional and marketing material.
If a person receives a notice of direction and considers they are lawfully using the GI, they may request for MPI to review the notice. For example, a person may be qualified to use a GI because of an applicable transition period for phasing out its use.
Where a person fails to comply with a notice of direction, MPI may issue an infringement notice which carries a penalty of $400 for individuals and $800 for any other person. Where the person fails to pay the infringement notice penalty in a timely manner, MPI may initiate court proceedings against the infringing person, and the court may order a fine of up to $1,200 for individuals and up to $2,400 for any other person. The person using the GI may also request a hearing to resolve the matter in court.
In other circumstances, MPI may initiate civil legal action against a person infringing a registered GI as if MPI were an interested person (as discussed above).