VZCZCXRO7847
RR RUEHNZ
DE RUEHWL #0097/01 0380500
ZNR UUUUU ZZH
R 070500Z FEB 06
FM AMEMBASSY WELLINGTON
TO RUEHC/SECSTATE WASHDC 2356
INFO RUEHNZ/AMCONSUL AUCKLAND 0626
RUCPDOC/USDOC WASHDC 0029

UNCLAS SECTION 01 OF 02 WELLINGTON 000097 
 
SIPDIS 
 
SIPDIS 
 
STATE FOR EB/TPP/MST/IPC-BSOILA AND EAP/ANP-DRICCI 
STATE PLEASE PASS TO USTR FOR EBRYAN AND KHAUDA 
COMMERCE FOR 4530/ITA/MAC/AP/OSAO/ARI BENAISSA 
COMMERCE PLEASE PASS TO USPTO-ACOTTON 
 
E.O. 12958: N/A 
TAGS: KIPR ETRD NZ
SUBJECT: USE OF TERM BOURBON BY NEW ZEALAND PRODUCER 
 
REF: STATE 12833 
 
¶1. In response to reftel, post contacted New Zealand 
government officials regarding a New Zealand company that is 
manufacturing and selling a spirit called "OLD BUSMAN with a 
logo stating "Pot-stilled by Bourbon NZ Ltd."  The Distilled 
Spirits Council of the United States (DISCUS) is concerned 
about this use of the term "Bourbon" on a product not made 
in the United States.  Based on discussions with officials 
at the New Zealand Ministry of Economic Development, 
Commerce Commission, Food Standards Australia and New 
Zealand, and the New Zealand Food Safety Authority, post has 
learned the following: 
 
¶2.  The officials see this case as a matter for private 
action:  DISCUS could take the New Zealand "bourbon" maker 
to court and seek an injunction.  Such action could be 
brought under Section 9 of the New Zealand Fair Trading Act 
1986, which prohibits conduct in trade that is misleading or 
deceptive or is likely to mislead or deceive.  Action also 
could be pursued under a claim of "passing off," which 
essentially is trading on the reputation or goodwill of 
another product.  Passing off has no statutory base but 
arises from common law.  While the act and "passing off" are 
similar in application, they exist independently in law. 
 
¶3. The case "Wineworths Group Limited v Comite 
Interprofessionel du Vin de Champagne (1992) 2 NZLR 327" 
might be most relevant.  The court ruled in favor of French 
Champagne makers against a New Zealand agent for an 
Australian company making an "Australian Champagne." The 
French Champagne makers made two separate claims, one under 
the Fair Trading Act and the other under the tort of passing 
off.  The court rejected the claim under the act, but ruled 
for the French Champagne makers on the ground of passing 
off, based on Champagne's reputation in New Zealand as a 
French product.  Post will send addressees a copy of the 
judgment via e-mail.  Counsel for the champagne producers 
were Julian Miles QC of Auckland and Jack Hodder, a partner 
at Chapman Tripp in Wellington. 
 
¶4. Should the government enact the Geographical Indications 
(Wine and Spirits) Registration Bill, New Zealand would have 
the capacity to register Bourbon as a geographical 
indication.  The bill, introduced into Parliament in June 
2005, had its first reading in Parliament and was referred 
to the Select Committee on Foreign Affairs, Defense and 
Trade in December 2005.  The committee invited public 
comments on the bill until February 3. 
 
¶5. Meanwhile, there is scope for geographical indications to 
be protected in New Zealand under the Trade Marks Act 2002. 
A GI potentially could be registered as a collective or 
standard mark if it met the criteria for such a mark and 
were not descriptive.  However, because geographical terms 
usually are considered descriptive, most GIs would not meet 
that requirement.  A GI could be registered as a 
certification mark even if it were descriptive, if it could 
be shown to be used in the market and seen as distinctive. 
Thus, a certification mark for Stilton cheese is registered 
in New Zealand. 
 
¶6. The Food Standards Code of Australia and New Zealand, 
Part 2.7.5 on "spirits," was established to give effect to 
the WTO Agreement on Trade-Related Aspects of Intellectual 
Property Rights (TRIPS).  It protects geographical 
indications that represent "a given quality, reputation or 
other characteristic of the product which is essentially 
attributable to its geographical origin."  It does not 
specifically mention "Bourbon."  The code says that a GI 
must not be used in relation to a spirit unless "the spirit 
has been produced in the country, locality or region 
indicated."  However, the food standards code could not be 
used to enforce protection of a GI until the Geographical 
Indications (Wine and Spirits) Registration Bill were 
passed, allowing GIs to be registered in New Zealand.  The 
New Zealand Food Safety Authority is empowered to 
investigate complaints and would be able to take a producer 
to court over infringement of the food standards code.  Part 
2.7.5 of the code can be accessed via the link: 
http://www.foodstandards.gov.au/_srcfiles/fsc _2_7_5_Spirits_ 
v78.doc. 
 
¶7. The Commerce Commission, New Zealand's competition 
watchdog, does not consider this a matter that it would 
pursue because it does not meet the Commission's screening 
criteria.  A Commission representative said it would be 
 
WELLINGTON 00000097  002 OF 002 
 
 
difficult to comment on the likely success of a court case, 
under Section 9 of the Fair Trading Act or on the ground of 
passing off, because the Commission does not know enough 
about how Bourbon is viewed by consumers in New Zealand. 
 
MCCORMICK