AUSTRALIAN WINE AND BRANDY CORPORATION AMENDMENT ACT 2010 (NO. 98, 2010) - SCHEDULE 1 Amendments relating to the Agreement between Australia and the European Community on trade in wine

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AUSTRALIAN WINE AND BRANDY CORPORATION AMENDMENT ACT 2010 (NO. 98, 2010) - SCHEDULE 1

Amendments relating to the Agreement between Australia and the European Community on trade in wine

Part 1 -- Amendments

Australian Wine and Brandy Corporation Act 1980

1 Paragraph 3(1)(e)

Omit "; and", substitute "and other international agreements;".

2 Paragraph 3(1)(f)

Repeal the paragraph.

3 Subsection 4(1) (paragraph (a) of the definition of agreement country )

Omit "European Economic Community", substitute "European Community".

4 Subsection 4(1)

Insert:

"country" has a meaning affected by subsection (2).

5 Subsection 4(1)

Insert:

"designated foreign country" has the meaning given by subsection 40K(3).

6 Subsection 4(1) (definition of EC country )

Omit "European Economic Community", substitute "European Community".

7 Subsection 4(1) (definition of geographical indication )

Repeal the definition, substitute:

"geographical indication" , in relation to wine goods, means an indication that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

8 Subsection 4(1) (definition of modify )

Omit "or other" (wherever occurring).

9 Subsection 4(1)

Insert:

"protection date" for a registered traditional expression has the meaning given by subsection 40DB(6).

10 Subsection 4(1) (definition of Register )

Repeal the definition, substitute:

"Register" means the Register of Protected Geographical Indications and Other Terms kept under section 40ZC.

11 Subsection 4(1)

Insert:

"registered additional term" means a term that is included in Part 4 of the Register.

12 Subsection 4(1) (definition of registered ancillary protected expression )

Repeal the definition.

13 Subsection 4(1) (definition of registered condition )

Repeal the definition.

14 Subsection 4(1)

Insert:

"registered conditions of use" , in relation to:

(a) a registered geographical indication; or

(b) a registered translation of such an indication; or

(d) a registered quality wine term; or

(e) a registered additional term;

means a condition of use included in the Register that is applicable to the geographical indication, translation, traditional expression, quality wine term or additional term (as the case may be).

15 Subsection 4(1) (definition of registered geographical indication )

Omit all the words after "included", substitute "in Part 1 of the Register".

16 Subsection 4(1)

Insert:

"registered quality wine term" means a term that is included in Part 3 of the Register.

17 Subsection 4(1) (definition of registered traditional expression )

Omit all the words after "included", substitute "in Part 2 of the Register".

18 Subsection 4(1)

Insert:

"registered translation" of a registered geographical indication means a translation, included in Part 1 of the Register, of the registered geographical indication.

19 Subsection 4(1) (definition of registered variety of grapes )

Repeal the definition.

20 Subsection 4(1) (definition of Registrar )

Repeal the definition, substitute:

"Registrar" means the Registrar of Protected Geographical Indications and Other Terms established under subsection 40ZA(1).

21 Subsection 4(1) (definition of traditional expression )

Repeal the definition, substitute:

"traditional expression" , in relation to wine originating in a foreign country, means a traditionally used name referring, in particular, to the method of production or to the quality, colour or type of the wine.

22 Subsection 4(1)

Insert:

"World Trade Organization" means the body of that name established by the WTO Agreement, done at Marrakesh on 15 April 1994.

Note: The text of the WTO Agreement is set out in Australian Treaty Series 1995 No. 8 ([1995] ATS 8). In 2009, the text of an Agreement in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

23 After subsection 4(1)

Insert:

References to country

(2) For the purposes of this Act, a reference to a country includes a reference to a member of the World Trade Organization.

24 Subsection 4(3)

Omit "European Economic Community", substitute "European Community".

Note: The following heading to subsection 4(3) is inserted " Parties to prescribed wine trading agreements ".

25 Section 5C

After "addresses)", insert ", indications".

26 Paragraph 8(2)(aa)

Repeal the paragraph, substitute:

(aa) to determine any conditions of use that are to be applicable to any registered geographical indications and any registered translations of such indications; and

Note 1: The following heading to subsection 8(1) is inserted " General power ".

Note 2: The following heading to subsection 8(2) is inserted " Specific powers ".

27 Paragraph 8(2)(ab)

Repeal the paragraph.

28 Paragraphs 8(2)(ac) and (ad)

Repeal the paragraphs, substitute:

(ac) to determine in relation to a foreign country:

(i) any traditional expressions that are to be registered in relation to wines originating in that country (being traditional expressions that are recognised in the laws and regulations of that country for the purpose of the description and presentation of wine); and

(ii) any conditions of use that are to be applicable to any or all of those expressions; and

(ad) to determine:

(i) in relation to Australia--any terms that are to be registered as additional terms in relation to wines originating in Australia (being terms that are required to be protected for the purpose of the description and presentation of wine); and

(ii) in relation to a foreign country--any terms that are to be registered as additional terms in relation to wines originating in that country (being terms that are recognised in the laws and regulations of that country for the purpose of the description and presentation of wine); and

(iii) in relation to a particular wine (regardless of origin)--any terms that are to be registered as additional terms in relation to that wine; and

(iv) any conditions of use that are to be applicable to any or all of the terms referred to in subparagraphs (i) to (iii); and

29 Paragraph 8(2)(ae)

Repeal the paragraph.

30 After paragraph 8(2)(g)

Insert:

(ga) without limiting paragraph (g), to charge fees for the provision of services, or the performance of work, by or on behalf of:

(i) the Corporation; or

(ii) the Geographical Indications Committee established by section 40N;

in relation to the determination of geographical indications and translations of such indications by the Geographical Indications Committee (including determinations for the omission of such indications and translations); and

31 Subsection 8(2A)

Omit "(ab), (ac), (ad) or (ae)", substitute "(ac) or (ad)".

Note 1: The following heading to subsection 8(2A) is inserted " Requirements for determinations by the Corporation ".

Note 2: The following heading to subsection 8(2E) is inserted " Review of determinations ".

32 Subsection 8(2F)

Omit "(ab), (ac), (ad) or (ae)" (wherever occurring), substitute "(ac) or (ad)".

Note 1: The following heading to subsection 8(2G) is inserted " Inclusion of particulars in the Register ".

Note 2: The following heading to subsection 8(3) is inserted " Consistency with corporate and operational plans ".

33 Subsection 38(4)

Omit "(4)".

34 Subsection 38(4)

After "geographical indications", insert ", and translations of such indications,".

35 Part VIB (heading)

Repeal the heading, substitute:

Part VIB -- Protection of geographical indications and other terms

36 Paragraph 40A(a)

After "agreements", insert "and other international agreements".

37 Sections 40C to 40H

Repeal the sections, substitute:

Subdivision A -- Sale, export or import of wine with a false description and presentation

40C Offence--sale, export or import of wine with a false description and presentation

(1) A person commits an offence if:

(a) the person sells, exports or imports wine; and

(b) the wine is sold, exported or imported by the person:

(i) in trade or commerce; and

(ii) with a false description and presentation.

Penalty: Imprisonment for 2 years.

Note: A court may impose a maximum fine of 120 penalty units instead of, or in addition to, a term of imprisonment. A body corporate that is convicted of an offence may be fined up to 5 times that maximum fine. (See subsections 4B(2) and (3) of the Crimes Act 1914. )

(2) The description and presentation may be false even if it indicates the country, region or locality (as the case may be) in which the wine originated.

40D False descriptions and presentations

(1) This section has effect for the purposes of section 40C.

(2) Subject to sections 40DA and 40DB, the description and presentation of wine is false if:

(a) it includes the name of a country, or any other indication that the wine originated in a particular country, and the wine did not originate in that country; or

(b) it includes a registered geographical indication, and the wine did not originate in a country, region or locality in relation to which the geographical indication is registered; or

(c) it includes a registered translation of a registered geographical indication, and the wine did not originate in a country, region or locality in relation to which the geographical indication is registered; or

(d) it includes a registered traditional expression, and:

(i) the wine is not a wine in relation to which the expression is registered; and

(ii) the wine is in a category of wine in relation to which the expression is registered; and

(iii) the expression is in a language in relation to which the expression is registered; or

(e) it is not in accordance with any provisions relating to the description and presentation of wine as are prescribed for the purposes of this paragraph.

(3) Subsection (2) does not limit what, apart from that subsection, is a false description and presentation of wine.

(4) For the purposes of paragraphs (2)(b), (c) and (d):

(a) a registered geographical indication; or

(b) a registered translation of such an indication; or

is included in the description and presentation of wine even if the indication, translation or expression is accompanied by an expression such as "kind", "type", "style", "imitation", "method", or any similar expression.

40DA Circumstances in which description and presentation is not false--general

Inclusion of geographical indication, translation or traditional expression registered for more than one place

(1) If:

(a) the description and presentation of wine includes an indication or term that is a registered geographical indication, a registered translation of such an indication, or a registered traditional expression, in relation to a country, region or locality; and

(b) the wine originated in that country, region or locality; and

then the description and presentation is not false merely because the indication or term is also a registered geographical indication, a registered translation of such an indication, or a registered traditional expression, in relation to another country, region or locality.

Inclusion of common English word or term

(2) If:

(a) the description and presentation of wine includes a word or term that is a registered geographical indication, a registered translation of such an indication, or a registered traditional expression, in relation to a country, region or locality; and

(b) the word or term is a common English word or term; and

(c) the word or term is not used in such a way as to indicate that the wine originated in the country, region or locality in relation to which the geographical indication, translation or traditional expression is registered; and

(d) the description and presentation indicates the country, region or locality in which the wine originated; and

(e) the word or term is used in good faith;

then the description and presentation is not false merely because it includes the word or term.

Inclusion of name of individual or address of winery

(3) The description and presentation of wine is not false merely because it includes:

(a) the name of an individual who manufactured, sold, exported or imported the wine; or

(b) if a person who manufactured, sold, exported or imported the wine is, apart from this subsection, lawfully permitted to use the name of an individual who previously manufactured, sold, exported or imported the wine--the name of that individual; or

40DB Circumstances in which description and presentation is not false--inclusion of registered traditional expressions

Inclusion of registered quality wine term

(1) If:

(a) the description and presentation of wine includes a registered quality wine term; and

(b) the wine originated in Australia; and

(c) the description and presentation indicates that the wine originated in Australia or in a region or locality in Australia; and

(d) the registered quality wine term is also a registered traditional expression; and

(e) the wine is in a category of wine in relation to which the expression is registered;

then the description and presentation is not false merely because it includes the registered quality wine term.

Wine originating in non‑agreement country

(2) The description and presentation of wine that originates in a foreign country that is not an agreement country is not false merely because it includes a term that is a registered traditional expression if:

(a) the term is not used in such a way as to be likely to mislead as to the country, region or locality in which the wine originated; and

(b) the description and presentation indicates the country, region or locality in which the wine originated; and

(c) the inclusion of the term in the description and presentation does not constitute unfair competition within the meaning of Article 10 bis of the Paris Convention for the Protection of Industrial Property of 20 March 1883 as amended.

Note: The text of the Convention is set out in Australian Treaty Series 1972 No. 12 ([1972] ATS 12). In 2009, the text of a Convention in the Australian Treaty Series was accessible through the Australian Treaties Library on the AustLII website (www.austlii.edu.au).

Inclusion of trade mark

(3) If:

(a) the description and presentation of wine includes a trade mark; and

(b) the trade mark contains or consists of a registered traditional expression; and

(i) the trade mark had been entered in good faith in the Register of Trade Marks; or

(ii) the owner of the trade mark had acquired rights in the trade mark through use in good faith;

then the description and presentation is not false merely because it includes that trade mark.

Inclusion of business name

(4) If:

(a) the description and presentation of wine includes a business name; and

(b) the business name contains or consists of a registered traditional expression; and

(c) before the protection date for the traditional expression, the business name was registered in good faith under the law of a State or Territory;

then the description and presentation is not false merely because it includes that business name.

(5) Subsection (4) does not limit subsection 40DA(3).

Definition of protection date

(6) In this Act, the protection date for a registered traditional expression is:

(a) if the traditional expression is registered in relation to an agreement country under paragraph 40ZD(2A)(a):

(i) unless subparagraph (ii) applies--the date on which the prescribed wine‑trading agreement to which that country is a party was signed; or

(ii) if that agreement is modified after that date to include the traditional expression and paragraph (b) does not apply--the date on which the agreement is so modified; or

(b) if the traditional expression is registered in relation to a foreign country (whether or not an agreement country) under paragraph 40ZD(2A)(b)--the date on which the traditional expression is registered.

Subdivision B -- Sale, export or import of wine with a misleading description and presentation

40E Sale, export or import of wine with a misleading description and presentation

(1) A person commits an offence if:

(a) the person sells, exports or imports wine; and

(b) the wine is sold, exported or imported by the person:

(i) in trade or commerce; and

(ii) with a misleading description and presentation.

Penalty: Imprisonment for 2 years.

(2) The description and presentation may be misleading even if it indicates the country, region or locality (as the case may be) in which the wine originated.

40F Misleading descriptions and presentations

(1) This section has effect for the purposes of section 40E.

Inclusion of geographical indication, translation or traditional expression

(2) Subject to sections 40FA and 40FB, the description and presentation of wine is misleading if:

(a) it includes a registered geographical indication, and the indication is used in such a way as to be likely to mislead as to the country, region or locality in which the wine originated; or

(b) it includes a registered translation of a registered geographical indication, and the translation is used in such a way as to be likely to mislead as to the country, region or locality in which the wine originated; or

(i) the wine is not a wine in relation to which the expression is registered; and

(ii) the wine is not in a category of wine in relation to which the expression is registered; and

(iii) the expression is in a language in relation to which the expression is registered; and

(iv) the expression is used in such a way as to be likely to mislead that the wine originated in a country, region or locality in relation to which the expression is registered or that the wine is in a category of wine in relation to which the expression is registered.

(3) For the purposes of subsection (2):

(a) a registered geographical indication; or

(b) a registered translation of such an indication; or

Inclusion of word resembling geographical indication, translation or traditional expression

(4) Subject to sections 40FA and 40FB, the description and presentation of wine is misleading if:

(a) it includes an indication or term that so resembles a registered geographical indication as to be likely to mislead that the wine originated in a country, region or locality in relation to which the indication is registered; or

(b) it includes a term that so resembles a registered translation of a registered geographical indication as to be likely to mislead that the wine originated in a country, region or locality in relation to which the indication is registered; or

(i) it includes a term that so resembles a registered traditional expression as to be likely to mislead that the wine originated in a country, region or locality in relation to which the expression is registered or that the wine is in a category of wine in relation to which the expression is registered;

(ii) the wine originated in a foreign country that is not an agreement country.

Inclusion of name of individual or address of winery

(5) The description and presentation of wine is misleading if:

(a) it includes:

(i) the name of an individual who manufactured, sold, exported or imported the wine; or

(ii) if a person who manufactured, sold, exported or imported the wine is, apart from this subsection, lawfully permitted to use the name of an individual who previously manufactured, sold, exported or imported the wine--the name of that individual; or

(iii) the name or address of the winery at which the wine was manufactured; and

(b) the name or address, as the case may be, is used in such a way in the description and presentation as to be likely to mislead as to the country, region or locality in which the wine originated.

Not in accordance with prescribed provisions

(6) The description and presentation of wine is misleading if it is not in accordance with any provisions relating to the description and presentation of wine as are prescribed for the purposes of this subsection.

Ordinary meaning of misleading not affected

(7) Subsections (2), (3), (4), (5) and (6) do not limit what, apart from those subsections, is a misleading description and presentation of wine.

40FA Circumstances in which description and presentation is not misleading--general

Inclusion of geographical indication, translation or traditional expression registered for more than one place

(1) If:

(b) the wine originated in that country, region or locality; and

then the description and presentation is not misleading merely because the indication or term is, or resembles, a registered geographical indication, a registered translation of such an indication, or a registered traditional expression, in relation to another country, region or locality.

Inclusion of common English word or term

(2) If:

(b) the word or term is a common English word or term; and

(d) the description and presentation indicates the country, region or locality in which the wine originated; and

(e) the word or term is used in good faith;

then the description and presentation is not misleading merely because it includes the word or term.

40FB Circumstances in which description and presentation is not misleading--inclusion of registered traditional expressions

Inclusion of registered quality wine term

(1) If:

(a) the description and presentation of wine includes a registered quality wine term; and

(b) the wine originated in Australia; and

(c) the description and presentation indicates that the wine originated in Australia or in a region or locality in Australia; and

(d) the registered quality wine term is also a registered traditional expression; and

(e) the wine is in a category of wine in relation to which the expression is registered;

then the description and presentation is not misleading merely because it includes the registered quality wine term.

Inclusion of trade mark

(2) If:

(a) the description and presentation of wine includes a trade mark; and

(b) the trade mark contains or consists of a registered traditional expression; and

(i) the trade mark had been entered in good faith in the Register of Trade Marks; or

(ii) the owner of the trade mark had acquired rights in the trade mark through use in good faith;

then the description and presentation is not misleading merely because it includes that trade mark.

Inclusion of business name

(3) If:

(a) the description and presentation of wine includes a business name; and

(b) the business name contains or consists of a registered traditional expression; and

(c) the business name was registered in good faith under the law of a State or Territory before the protection date for the traditional expression;

then the description and presentation is not misleading merely because it includes that business name.

(4) Subsection (3) does not limit subsection 40F(5).

Subdivision C -- Other provisions relating to sale, export or import of wine

40G Sale, export or import of wine in contravention of registered conditions of use

(1) A person commits an offence if:

(a) the person sells, exports or imports wine; and

(b) the wine is sold, exported or imported by the person in trade or commerce with a description and presentation that:

(i) includes an indication or term that is a registered geographical indication, a registered translation of such an indication, a registered traditional expression, a registered quality wine term or a registered additional term; and

(ii) does not comply with any registered conditions of use applicable to that geographical indication, translation, traditional expression, quality wine term or additional term (as the case may be).

Penalty: Imprisonment for 1 year.

Note: A court may impose a maximum fine of 60 penalty units instead of, or in addition to, a term of imprisonment. A body corporate that is convicted of an offence may be fined up to 5 times that maximum fine. (See subsections 4B(2) and (3) of the Crimes Act 1914 .)

Indication or term registered for more than one place

(2) Subsection (1) does not apply if:

(a) the indication or term is registered in one or more Parts of the Register in relation to one or more countries, regions or localities; and

(b) the description and presentation complies with the registered conditions of use applicable to the indication or term as registered in one of those Parts for one of those countries, regions or localities; and

(d) the description and presentation indicates that the wine originated in that country, region or locality.

Note: The defendant bears an evidential burden in relation to the matters in this subsection. (See subsection 13.3(3) of the Criminal Code .)

Indication or term is registered additional term for particular wine

(3) Subsection (1) also does not apply if:

(a) the indication or term is a registered additional term for a particular wine and is also either or both of the following:

(i) a registered additional term for another particular wine;

(ii) registered in one or more Parts of the Register in relation to one or more countries, regions or localities; and

(b) the description and presentation complies with the registered conditions of use that are applicable to the indication or term as registered:

(i) for one of those particular wines; or

(ii) in one of those Parts for one of those countries, regions or localities; and

(i) if subparagraph (b)(i) applies--the wine is the particular wine; or

(ii) if subparagraph (b)(ii) applies--the wine originated in that country, region or locality, and the description and presentation indicates that the wine originated in that country, region or locality.

Note: The defendant bears an evidential burden in relation to the matters in this subsection. (See subsection 13.3(3) of the Criminal Code .)

38 Subsection 40J(1) (definition of the offence provisions )

Repeal the definition, substitute:

"the offence provisions" means subsections 40C(1), 40E(1) and 40G(1).

39 Subsection 40K(1)

Omit ", 40G or 40H", substitute "or 40G".

40 Paragraphs 40K(1)(b) and (c)

Omit "an agreement country", substitute "a designated foreign country".

41 At the end of section 40K

Add:

(3) In this Act:

"designated foreign country" means a foreign country in relation to which a geographical indication, translation of such an indication, traditional expression, or additional term is registered.

42 Subsection 40M(1)

Repeal the subsection, substitute:

National food standard modified

(1) A national food standard that applies to wine has effect, in relation to wine that originates in any foreign country, as if any requirement in the standard to comply with particular oenological practices or processes, or compositional requirements, in relation to wine were replaced by a requirement to comply with the replacement practices, processes or requirements under either subsection (1A) or (1B).

Practices, processes and requirements set out in wine‑trading agreements

(1A) The replacement practices, processes or requirements under this subsection are:

(a) subject to paragraph (b), the oenological practices or processes, or compositional requirements, set out in a prescribed wine‑trading agreement as in force or existing from time to time; or

(b) if, in accordance with such an agreement, Australia has been notified of the authorisation of modifications of the oenological practices or processes, or compositional requirements, set out in the agreement--the oenological practices or processes, or compositional requirements, as so modified.

Practices, processes and requirements prescribed by the regulations

(1B) The replacement practices, processes or requirements under this subsection are the oenological practices or processes, or compositional requirements, prescribed by the regulations in relation to wine originating in any foreign country.

(1C) Regulations made for the purposes of subsection (1B):

(a) must not prescribe oenological practices or processes, or compositional requirements, in relation to wine originating in any foreign country unless the oenological practices or processes, or compositional requirements, apply to wine under the laws and regulations of a foreign country; and

(b) may prescribe oenological practices or processes, or compositional requirements, by applying, adopting or incorporating (with or without modification) a written instrument or other document:

(i) as in force or existing at a particular time; or

(ii) as in force or existing from time to time.

Note: The heading to section 40M is altered by omitting " agreement " and substituting " foreign ".

43 Subsection 40M(2)

Omit "or other".

Note: The following heading to subsection 40M(2) is inserted " Minister may suspend operation of section ".

44 Paragraph 40P(1)(b)

After "Part", insert "(including determining any conditions of use applicable to such GIs)".

45 At the end of paragraph 40P(1)(d)

Add "or under the regulations".

46 Subsection 40PA(1) (note)

Repeal the note, substitute:

Note: Geographical indications, and translations of such indications, in relation to wine originating in a foreign country are not determined under this Division. They are determined by the Committee under regulations made for the purposes of Division 4B (unless they are in a prescribed wine‑trading agreement).

47 At the end of section 40PA

Add:

(3) The regulations may modify the operation of this Division to remove any inconsistency with the operation of regulations made for the purposes of Division 4B.

48 Section 40RB

Omit "word or expression" (wherever occurring), substitute "word, expression or other indication".

49 Paragraph 40T(1)(b)

Omit "word or expression", substitute "indication".

50 At the end of subsection 40T(1)

Add:

; and (c) determine any conditions of use that are to be applicable to the geographical indication.

51 Paragraph 40T(3)(b)

Omit "a word or expression" (wherever occurring), substitute "an indication".

52 Division 4A of Part VIB (heading)

Repeal the heading, substitute:

Division 4A -- Omission of Australian registered geographical indications

53 At the end of subsection 40ZAA(1)

Add:

Note: Determinations for the omission of geographical indications, and translations of such indications, in relation to wine originating in a foreign country are not made under this Division. They are made by the Committee under regulations made for the purposes of Division 4B.

54 At the end of section 40ZAA

Add:

(3) The regulations may modify the operation of this Division to remove any inconsistency with the operation of regulations made for the purposes of Division 4B.

55 After Division 4A of Part VIB

Insert:

Division 4B -- Foreign geographical indications and translations

40ZAQ Determination of foreign geographical indications and translations

(1) The regulations may make provision for and in relation to the determination of geographical indications, and translations of geographical indications, in relation to wine originating in a foreign country.

Role of Committee

(2) Without limiting subsection (1), the regulations may:

(a) provide for the Committee to deal with applications for the determination of geographical indications, and translations of such indications, in relation to wine originating in a foreign country or a region or locality in a foreign country; and

(b) provide for the Committee to make determinations of such indications and translations (including determining any conditions of use applicable to such indications and translations); and

(d) provide for review by the Administrative Appeals Tribunal of such determinations.

Role of Registrar of Trade Marks

(3) Without limiting subsection (1), the regulations may also:

(a) provide for objections to be made to the Registrar of Trade Marks in relation to the determination of proposed geographical indications, and translations of such indications, in relation to wine originating in a foreign country or a region or locality in a foreign country; and

(b) set out the grounds on which such objections may be made; and

(c) set out the procedure to be followed in dealing with such objections (including the charging of fees, the holding of hearings and the taking of evidence); and

(d) provide for the Registrar of Trade Marks to make recommendations to the Committee in relation to the determination of the proposed indications and translations.

40ZAR Appeals against decisions of Registrar of Trade Marks

(1) An appeal lies to the Federal Court against such decisions of the Registrar of Trade Marks as are prescribed by the regulations (being decisions under regulations made for the purposes of subsection 40ZAQ(3)).

(2) The jurisdiction of the Federal Court to hear and determine appeals against prescribed decisions is exclusive of the jurisdiction of any other court except the jurisdiction of the High Court under section 75 of the Constitution.

(3) On hearing an appeal against a prescribed decision, the Federal Court may do any one or more of the following:

(a) admit further evidence orally, or on affidavit or otherwise;

(b) permit the examination and cross‑examination of witnesses, including witnesses who gave evidence before the Registrar of Trade Marks;

(d) affirm, reverse or vary the prescribed decision;

(e) give any judgment, or make any order, that, in all the circumstances, it thinks fit;

(f) order a party to pay costs to another party.

(4) The Registrar of Trade Marks may appear and be heard at the hearing of an appeal to the Federal Court against a prescribed decision.

(5) Except with the leave of the Federal Court, an appeal does not lie to the Full Court of the Federal Court against a decision of a single judge of the Federal Court in the exercise of its jurisdiction to hear and determine appeals against prescribed decisions.

(6) The regulations may make provision about the practice and procedure of the Federal Court in a proceeding under this section, including provision:

(a) prescribing the time for starting the action or proceeding or for doing any other act or thing; or

(b) for an extension of that time.

40ZAS Decisions not to affect rights under Trade Marks Act

A decision made under section 40ZAR, or under regulations made for the purposes of section 40ZAQ, does not:

(a) create or affect a right under the Trade Marks Act 1995 or at common law in respect of a trade mark; or

(b) in any way pre‑empt or affect a decision of the Registrar of Trade Marks under the Trade Marks Act 1995 in respect of a pending application for the registration of a trade mark.

40ZAT Determinations for the omission from the Register of foreign geographical indications and translations

(1) The regulations may make provision for and in relation to the omission from the Register of registered geographical indications, and registered translations of such indications, in relation to a foreign country or a region or locality in a foreign country.

(2) Without limiting subsection (1), the regulations may:

(a) provide for the Committee to deal with applications for the omission from the Register of registered geographical indications, and registered translations of such indications, in relation to a foreign country or a region or locality in a foreign country; and

(b) provide for the Committee to make determinations for the omission from the Register of such indications and translations; and

(d) provide for review by the Administrative Appeals Tribunal of such determinations.

56 Division 5 of Part VIB (heading)

Repeal the heading, substitute:

Division 5 -- Register of Protected Geographical Indications and Other Terms

57 Subsection 40ZA(1)

Repeal the subsection, substitute:

(1) There is to be a Registrar of Protected Geographical Indications and Other Terms.

58 Paragraph 40ZB(a)

Omit "Register of Protected Names", substitute "Register of Protected Geographical Indications and Other Terms".

59 Paragraph 40ZB(b)

Omit "enter", substitute "include".

60 Paragraph 40ZB(e)

Repeal the paragraph, substitute:

(e) in accordance with the directions of the Corporation or the Committee, to notify authorities and organisations in foreign countries of the geographical indications, translations of such indications, traditional expressions and additional terms included in the Register.

61 Subsection 40ZC(1)

Omit "Register of Protected Names", substitute "Register of Protected Geographical Indications and Other Terms".

Note: The heading to section 40ZC is replaced by the heading " Register of Protected Geographical Indications and Other Terms ".

62 Subsections 40ZD(1) and (2)

Repeal the subsections, substitute:

Parts of the Register

(1) The Register is to be divided into 4 parts as follows:

(a) Part 1 is to include:

(i) geographical indications in relation to wines originating in Australia, and any conditions of use applicable to those indications; and

(ii) geographical indications in relation to wines originating in a foreign country, any translations of those indications, and any conditions of use applicable to those indications or translations;

(b) Part 2 is to include traditional expressions in relation to wines originating in a foreign country, and any conditions of use applicable to those expressions;

(c) Part 3 is to include quality wine terms in relation to wines originating in Australia, and any conditions of use applicable to those terms;

(d) Part 4 is to include other terms (not being geographical indications, translations of geographical indications, traditional expressions, or terms referred to in paragraph (c)), in relation to wines, and any conditions of use applicable to those terms.

Particulars that must be included in Part 1 of the Register

(2) The Registrar must include in Part 1 of the Register (geographical indications), in accordance with the directions of the Corporation, the following particulars:

(a) in relation to Australia:

(i) Australia; and

(ii) the name of each State and internal Territory; and

(iii) any geographical indication determined by the Committee under Division 4 to be a geographical indication in relation to wines originating in Australia; and

(iv) any region or locality in relation to which such a geographical indication is determined; and

(v) any conditions of use applicable to such a geographical indication;

(b) in relation to an agreement country:

(i) each geographical indication that, under a prescribed wine‑trading agreement to which that country is a party, is a geographical indication in relation to wines originating in that country; and

(ii) any translation, recognised by that wine‑trading agreement, of each such geographical indication; and

(iii) any region or locality in relation to which each such geographical indication is to be registered; and

(iv) any conditions of use applicable to a geographical indication referred to in subparagraph (i) or a translation referred to in subparagraph (ii);

(i) any geographical indication determined by the Committee, under regulations made for the purposes of Division 4B, to be a geographical indication in relation to wines originating in that country; and

(ii) any translation determined by the Committee, under regulations made for the purposes of Division 4B, to be a translation of such a geographical indication; and

(iii) any region or locality in relation to which each such geographical indication is determined; and

(iv) any conditions of use applicable to a geographical indication referred to in subparagraph (i) or a translation referred to in subparagraph (ii).

Particulars that must be included in Part 2 of the Register

(2A) The Registrar must include in Part 2 of the Register (traditional expressions), in accordance with the directions of the Corporation, the following particulars:

(a) in relation to an agreement country:

(i) each traditional expression that is listed in relation to wines originating in that country in a prescribed wine‑trading agreement to which that country is a party; and

(ii) each wine originating in that country that is listed in that wine‑trading agreement in relation to each such traditional expression; and

(iii) each category of wine that is listed in that wine‑trading agreement in relation to each such traditional expression; and

(iv) each language that is listed in that wine‑trading agreement in relation to each such traditional expression; and

(v) any conditions of use applicable to each such traditional expression;

(b) in relation to a foreign country (whether or not an agreement country):

(i) each traditional expression that is listed in the laws and regulations of that country for the purpose of the description and presentation of wines originating in that country, and that is determined by the Corporation; and

(ii) each wine originating in that country that is listed in those laws and regulations in relation to such a traditional expression; and

(iii) each category of wine that is listed in those laws and regulations in relation to such a traditional expression; and

(iv) each language that is listed in those laws and regulations in relation to such a traditional expression; and

(v) any conditions of use applicable to each such traditional expression.

Particulars that must be included in Part 3 of the Register

(2B) The Registrar must include in Part 3 of the Register (quality wine terms), in accordance with the directions of the Corporation, the following particulars:

(a) each term (a quality wine term ) that, under a prescribed wine‑trading agreement to which Australia is a party, is a quality wine term in relation to wines originating in Australia;

(b) any region or locality in relation to which each such term is to be registered;

Particulars that must be included in Part 4 of the Register

(2C) The Registrar must include in Part 4 of the Register (additional terms), in accordance with the directions of the Corporation, the following particulars:

(a) in relation to Australia:

(i) each term (other than a geographical indication or a quality wine term) that, under a prescribed wine‑trading agreement to which Australia is a party, is required to be protected for the purpose of the description and presentation of wine originating in Australia; and

(ii) any other term that the Corporation has determined is required to be protected for the purpose of the description and presentation of wine originating in Australia; and

(iii) any region or locality in relation to which a term referred to in subparagraph (i) or (ii) is to be registered; and

(iv) any conditions of use applicable to a term referred to in subparagraph (i) or (ii);

(b) in relation to an agreement country:

(i) each term (other than a geographical indication, a translation of a geographical indication, or a traditional expression) that, under a prescribed wine‑trading agreement to which that country is a party, is required to be protected for the purpose of the description and presentation of wine originating in that country; and

(ii) any region or locality in relation to which each such term is to be registered; and

(iii) any conditions of use applicable to each such term;

(i) each term (other than a geographical indication, a translation of a geographical indication, or a traditional expression) that is recognised in the laws and regulations of that country for the purpose of the description and presentation of wine originating in that country, and that is determined by the Corporation; and

(ii) any region or locality in relation to which each such term is to be registered; and

(iii) any conditions of use applicable to each such term;

(d) any other term (not being a geographical indication, a translation of a geographical indication, a traditional expression or a quality wine term) that the Corporation has determined is required to be protected in relation to particular wines, and any conditions of use applicable to those terms.

63 Paragraph 40ZD(3)(a)

After "Division 4", insert "or under regulations made for the purposes of Division 4B".

64 Clause 1 of the Schedule (definition of nominated member )

Omit "or (c)", substitute ", (c) or (d)".

65 Subclause 2(1) of the Schedule

Omit "3 members as follows", substitute "the following members".

66 At the end of subclause 2(1) of the Schedule

Add:

; (d) any other member prescribed by the regulations for the purposes of this paragraph.

67 At the end of subclause 10(3) of the Schedule

Add:

Note: A different quorum may be prescribed by the regulations if the Committee has more than 3 members. (See subclause (10).)

68 At the end of subclause 10(7) of the Schedule

Add:

Note: A different process for resolving questions may be prescribed by the regulations if the Committee has more than 3 members. (See subclause (10).)

69 At the end of clause 10 of the Schedule

Add:

(10) If one or more members are prescribed by the regulations for the purposes of paragraph 2(1)(d):

(a) the number of members that constitutes a quorum at a meeting of the Committee is the number (being a number greater than 2) prescribed by the regulations for the purposes of this paragraph; and

(b) if members who are present at a meeting of the Committee are unable to agree on a question, the process that is to apply is the process prescribed by the regulations for the purposes of this paragraph.

Trade Marks Act 1995

70 Section 6

Before "In this Act", insert "(1)".

71 Section 6 (definition of geographical indication )

Repeal the definition, substitute:

"geographical indication" , in relation to goods, means a sign that identifies the goods as originating in a country, or in a region or locality in that country, where a given quality, reputation or other characteristic of the goods is essentially attributable to their geographical origin.

72 Section 6

Insert:

"World Trade Organization" means the body of that name established by the WTO Agreement, done at Marrakesh on 15 April 1994.

73 At the end of section 6

Add:

(2) For the purposes of this Act, a reference to a country includes a reference to a member of the World Trade Organization.

74 After paragraph 61(2)(a)

Insert:

(aa) the sign is not recognised as a geographical indication for the designated goods in the country in which the designated goods originated; or

75 At the end of section 61 (before the notes)

Add:

(4) An opposition on a ground referred to in subsection (1) also fails if the applicant establishes that:

(a) the sign consists of a word or term that is a geographical indication; and

(b) the word or term is a common English word or term; and

(c) the applicant has not used, and does not intend to use, the trade mark in relation to the relevant goods in a way that is likely to deceive or confuse members of the public as to the origin of the relevant goods.

76 At the end of Subdivision A of Division 1 of Part 8

Add:

83A Amendment of registered trade mark--inconsistency with international agreements

(1) This section applies to a registered trade mark if:

(a) using the trade mark in relation to any or all of the goods or services in respect of which the trade mark is registered would be inconsistent with any relevant obligation of Australia under an international agreement; and

(b) at the time when the particulars of registration of the trade mark were entered in the Register, the obligation did not exist.

(2) The registered owner of the registered trade mark may, in writing, request the Registrar to do either or both of the following:

(a) amend the representation of the trade mark as entered in the Register to remove or substitute part (but not the whole) of the representation;

(b) amend the particulars entered in the Register in respect of the trade mark to remove or substitute any or all of the particulars.

(3) The Registrar must advertise the request for the amendment in the Official Journal .

Note: In certain circumstances the Registrar need not advertise a request under this subsection (see subsection (7)).

(4) A person may, as prescribed, oppose the granting of the request for the amendment on the ground that, if the amendment is made, the trade mark will be substantially identical with, or deceptively similar to:

(a) a trade mark registered in the name of the person in respect of similar or closely related goods or similar or closely related services; or

(b) a trade mark that is being used by the person in respect of similar or closely related goods or similar or closely related services.

Note: In certain circumstances a person cannot oppose the granting of a request under this subsection (see subsection (7)).

(5) The Registrar may grant the request for the amendment if he or she is satisfied that the amendment is reasonable, having regard to:

(a) the extent to which the amendment relates to the inconsistency; and

(b) whether the amendment involves replacing a term (the existing term ) with another term that is recognised by the industry in which the trade mark is used as being a substitute for the existing term; and

(c) if a person has opposed the request for the amendment under subsection (4)--the extent (if any) to which the ground on which the request was opposed has been established; and

(d) in any case--any other relevant circumstance.

(6) The Registrar may grant the request for the amendment even if the amendment would:

(a) substantially affect the identity of the trade mark; or

(b) extend the rights that the registered owner has under the registration.

(7) If the Registrar is satisfied that the request for the amendment would not be granted even in the absence of opposition under subsection (4):

(a) the Registrar need not advertise the request in accordance with subsection (3); and

(b) the request cannot be opposed, despite subsection (4); and

(8) The registered owner who made the request for amendment, or a person who opposes the request under subsection (4), may appeal to the Federal Court from a decision of the Registrar under this section.

Part 2 -- Application and transitional provisions

77 Application of item 37

(1) Subject to subitem (2), the amendment made by item 37 of this Schedule applies in relation to wine that is sold, exported or imported on or after the commencement of this Schedule.

(2) If, before the commencement of this Schedule, wine has been exported from a foreign country for import into Australia, the amendment made by item 37 of this Schedule does not apply in relation to the sale or import of that wine on or after that commencement.

78 Application of items 39 to 41

The amendments made by items 39 to 41 of this Schedule do not apply in relation to proceedings for an offence against section 40C, 40E or 40G of the Australian Wine and Brandy Corporation Act 1980 (as in force before the commencement of this Schedule) constituted by conduct engaged in before the commencement of this Schedule.

79 Application of items 44 and 50

The amendments made by items 44 and 50 of this Schedule apply in relation to determinations of geographical indications that are made on or after the commencement of this Schedule, whether the application for the determination was made before, on or after that commencement.

80 Appointment of Registrar unaffected

The amendment of section 40ZA of the Australian Wine and Brandy Corporation Act 1980 , made by item 57 of this Schedule, does not affect the validity of an appointment under that section that is in force immediately before the commencement of this Schedule.

81 Application of items 71, 74 and 75

The amendments made by items 71, 74 and 75 of this Schedule apply in relation to:

(a) applications for the registration of trade marks that are made on or after the commencement of this Schedule; and

(b) applications for the registration of trade marks that are, on that commencement, pending; and

(c) applications under section 88 of the Trade Marks Act 1995 that are made on or after that commencement in respect of trade marks registered before, on or after that commencement.

82 Application of item 76

The amendment made by item 76 of this Schedule applies in relation to trade marks registered before, on or after the commencement of this Schedule.

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