The use of "Nero d'Avola" to describe Australian wine made from that variety has an uncertain future following the recognition under Australian law of the Italian geographical indication (GI) "Avola".
Background
On 7 December 2018, Australia's Geographical Indications Committee (Committee) made a final determination for protection in Australia of the Italian GI Avola, despite opposition from the Winemakers' Federation of Australia (WFA).
The determination of a foreign GI by the Committee leads to the registration of that GI under the Wine Australia Act 2013, making it an offence to sell, export or import wine in Australia with a description and presentation (for example, a label) that includes the registered GI if the wine does not originate in the country, region or locality related to the registration (subject to limited exceptions).
The determination resulted from an application by the Agriculture and Rural Development of the European Commission of the European Union for the determination of 906 foreign GIs, including Avola.
Avola is a town in south east Sicily and part of name of the grape variety Nero d'Avola (black [grape] of Avola in Italian).
Objection and decision
The Winemakers' Federation of Australia (WFA) objected to the proposed determination of Avola as a GI on the basis that "Nero d'Avola" is used as the name of a grape variety in Australia, seemingly concerned about the consequences the determination could have on the legality of the use of "Nero d'Avola" to describe Australian wine made from the variety.
Transitional provisions of the current Wine Australia Regulations 2018 meant the objection was considered in accordance with the former Australian Grape and Wine Authority Regulations 1981 as in force at the time the notice inviting objections was published, which provided:
A person may object to the determination of a proposed item on the ground that the proposed item is used in Australia:
- as the common name of a type or style of wine; or
- as the name of a variety of grapes.
Those grounds of objection are expressed in identical terms in the current Regulations.
In support of its objection, WFA produced statistics showing that 31,245 litres of Nero d' Avola or Nero d' Avola blends were exported from Australia in the four years to November 2017, data showing that there are 7.6 hectares of Nero d' Avola planted in South Australia, evidence from an Australian nursery detailing importation and distribution arrangements for Nero d' Avola, an excerpt from James Halliday's Wine Companion website stating that "there are more than 55 Nero d' Avola vineyards in Australia" and an email from Brad Hickey of Brash Higgins in McLaren Vale explaining that winery's history and success with the variety.
The decision of the delegate of the Registrar of Trade Marks concluded "I do not think it is open to me to simply find that the ground [of objection] has been made out where the proposed [GI] only forms part of the name of a variety of grapes."
Did it have to be this way?
The Registrar's delegate reached her conclusion after searching for evidence of a tendency for the variety name Nero d' Avola to be shortened to Avola, but, of course, found none.
Had the Regulations recognised objections where a grape variety name forms part of the proposed GI (as the Regulations do in the case of trade marks), the decision could have been different.
The Regulations are weighted towards protecting GIs rather than upholding the concerns of objectors. For example, if the Registrar of Trade Marks decides that a ground of objection has been made out, the Registrar can still recommend the determination of the GI if "satisfied that it is reasonable in the circumstances". There is no equivalent discretion for the Registrar to recommend the rejection of a GI application where an objection has not been made out.
That being said, the ultimate discretion as to whether to determine a GI rests with the Committee. The Regulations provide:
The Committee may determine a GI...that was the subject of [an objection] if:
- all appeals against, or reviews of, the decision in relation to the proposed item have been finalised; and
- the decision standing after the appeals and reviews have been finalised is that a ground of objection has not been made out in relation to the proposed item.
(my emphasis)
The Regulations guide the exercise of the Committee's discretion by requiring it to have regard to whether the GI is protected by the laws of its own country and to disregard submissions based on trade mark rights. But there was nothing preventing the Committee from considering WFA's concerns about Australian usage of the grape variety name Nero d'Avola as the Committee is empowered to "have regard to any other matter it considers relevant".
On the face of the determination, it is not apparent which matters the Committee considered.
Impacts of the determination
Wine Australia's media releases about both the interim and final determinations of the Avola GI sought to assure Australian winemakers that "determination of Avola as a GI in Australia will not prevent the use of the term Nero d'Avola."
The reality does not appear so simple.
Sections 40D and 40E of Wine Australia Act 2013 provide that a description and presentation of wine is:
- false if "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" (my emphasis); and
- misleading if "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" (my emphasis).
On that basis, if an Australian wine's description includes Avola, as it seemingly would if described by the variety name Nero d'Avola, there is a risk it could be considered false, misleading or both.
What now?
The decision of the Registrar of Trade Marks that the WFA's objection was not made out could have been appealed to the Federal Court. Independently, the Committee's final determination of the Avola GI could have been appealed to the Federal Administrative Appeals Tribunal (the deadline was 4 January 2019).
Subject to any appeal, Australian winemakers of Nero D'Avola face an uncertain future.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
