Explained: The EU and New Zealand free trade agreement
Big changes to New Zealand's IP laws make it vital to understand the new-look rules, says Christopher Young of MinterEllisonRuddWatts.
The July 2023 European Union (EU) and New Zealand Free Trade Agreement (FTA) entered into force on 1 May 2024.
The FTA requires significant changes to New Zealand’s intellectual property laws, as New Zealand has agreed to extend or amend IP protection in the following areas:
- Copyright
- Industrial designs;
- Artist reseller rights
- Geographical Indications
Copyright
Currently New Zealand law provides that the term of copyright is generally the life of the author + 50 years—New Zealand has agreed to extend copyright term to 70 years by May 1, 2028, to bring New Zealand into line with the (EU) and other countries (including Australia, Canada, and the US).
Artist Reseller Rights
The FTA requires New Zealand to establish an artist resale rights regime the Resale Right for Visual Artists Act 2023 (RVA Act) which will come into force on 1 December 2024 if a prior date is not appointed.
The RVA Act establishes an artist reseller royalty right, which entitles eligible artists to receive a 5% royalty payment for resale of original visual work on the secondary professional art market. The resale right period starts when the artwork is created and ends 50 years after the death of the author.
Geographical Indications
As one of the most strongly negotiated parts of the FTA, New Zealand agreed to provide protection under the geographical indications (GIs) regime for the EU’s 1,975 registered GIs. There are transition periods but under this regime, no business can use an EU GI on its products in New Zealand unless the product complies with the relevant GI requirements.
In response to New Zealand’s concerns about use of common terms, there are provisions providing for a sell-down of existing stock and a “phase-out period” for businesses that have used some specific EU terms (for example Feta and Port have a nine-year transition period and Prosecco, Sherry and Grappa have a five-year transition period).
There is also provision for ‘prior users’ for “Gruyère” or “Parmesan” to continue use, provided those users were using those terms in good faith for a period of at least five years before the FTA.
Changes to local law and trademark examination
SummaryThe agreement includes many important updates for IP owners, says Christopher Young of MinterEllisonRuddWatts.irits) Registration Act 2006 (renamed to the Geographical Indications Registration Act 2006) to:
- expand coverage from wine and spirits to other goods covered by the EU GIs;
- expressly recognise EU GIs as part of New Zealand’s GI regime;
- implement a new enforcement regime;
- implement the right to bring proceedings for breach of restriction on use of a registered GI.
The Intellectual Property Office of New Zealand (IPONZ) has recently updated its Trade Mark Practice Guidelines for GIs. These Practice Guidelines explain how IPONZ will examine trademark specifications that include GIs.
Generally, generic descriptions should be used, however, GIs can be used in classes relevant to the GI if:
- the goods originate in the place of geographical origin relating to the GI;
- the goods meet the other GI criteria; and
- the applicant uses [“GI name”] (GI) [products covered by the GI]” format in its specification.
Notable decision: GI for Gruyère
In Interprofession du Gruyère [2024] NZIPOTM 21 (May 20, 2024), the Assistant Commissioner of Trade Marks rejected a challenge by Interprofession du Gruyère (Interprofession) to the commissioner’s refusal to accept an application for a certification mark for Gruyère.
Interprofession filed an application to register Gruyère on December 21, 2018, but received several Compliance Reports from the Office raising objections on the basis that Gruyère was not sufficiently distinctive to be registrable as a trade mark.
In a hearing following a decision that the matter was at an impasse, Interprofession filed evidence including survey evidence in support of registration, arguing that Gruyère is recognised as a “particular type of cheese that is made in Switzerland” arguing that Gruyère’s status as a Protected Designation of Origin (PDO) was a factor relevant to inherent distinctiveness and acquired distinctiveness.
The commissioner accepted that the PDO status could not be discounted when considering distinctiveness, but noted this must relate “to the impact the PDO has on the New Zealand market and consumers”, contrasting the PDO status with the registered GI for Gruyère (although this was only for France, not Switzerland).
The commissioner ultimately rejected Interprofession’s argument, noting that Gruyère was “floating in the muddy waters of cheese producers using GRUYERE in a generic way” and while acknowledging that New Zealanders may be recognising GI, was not satisfied that the evidence established that this was the position when the Gruyère application was filed.
Christopher Young is a partner at MinterEllisonRuddWatts. He can be contacted at: Christopher.Young@minterellison.co.nz
