Wine makers win 'South Island' trademark case
The New Zealand wine industry has won a four-year battle to prevent an Australian supermarket giant from trademarking the name South Island.
Woolworths applied to register a trademark wine label in New Zealand in 2009 using the name South Island and an image of a mountain.
The New Zealand Winegrowers Association (NZWA) said the mark would give Woolworths an effective "monopoly" on the South Island name being used on wine bottle labels.
The association spent four years opposing the application in defence of southern winegrowers and was awarded more than $3000 in costs by the Intellectual Property Office (IPO).
NZWA general counsel John Barker said the logic behind trying to trademark the name South Island was a "mystery".
"We didn't have any option but to defend it," he said. "It draws a line in the sand."
Trademarking geography would be bad for an industry in which consumers needed to know where wines were made.
South Island pinot noirs, for example, were recognised as different from their North Island counterparts.
Mt Riley Wines had used the South Island geography on its wine bottle labels and opposed Woolworths' application.
General manager Amy Murphy said she was surprised the application had made it so far through the IPO's process.
"It would have caused us a few difficulties if it had got through," she said.
Mt Riley used the South Island as the origin for some wine in American markets.
The IPO ruled the Woolworths image was not distinctive enough to be trademarked. A logo dominated by the words "South Island" could cause confusion for consumers.
The industry had history of using similar mountain symbols and the South Island name in labelling to denote the origin of the wine rather than a specific label.
Woolworths had already successfully registered its wine label as a trademark in Australia. However, Australian intellectual property legislation allowed for a caveat to be added that would prevent Woolworths taking legal action against brands using the name.
In many countries Geographical Indicators (GI) are used to ensure products are labelled correctly with the region of origin.
Champagne must come from Champagne in France and Bordeaux must be from Bordeaux.
The use of GIs allows consumers to authenticate the origin of a product and be confident it fits the expected character of products from the area.
Barker said legislation was organised in 2006 to set up a similar system for New Zealand, which would be helpful for consumers. It would also allow wine regions to be mapped out for the consumer and producer – meaning wines from Marlborough would carry a Marlborough GI.
The association was now calling for the Government to finalise the legislation.
If New Zealand had a GI system in place it would be harder to trademark geographical areas.
Woolworths Australia said it was considering its options. It had the opportunity to appeal the decision to the New Zealand High Court.
PROOF OF ORIGIN
Famous geographical indicators that define a product's quality and character:
Champagne wine (France)
Gruyere cheese (Switzerland)
Prosciutto di Parma – Parma ham (Italy)
Bordeaux wine (France)
Tequila spirits (Tequila, Mexico)
Darjeeling tea (India)
- © Fairfax NZ News
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