Canada: Intellectual Property Special Alert - Fall 2013

In This Issue

  1. CETA Summary Tabled in House of Commons
    Noel Courage, Scott MacKendrick and Tamara Winegust discuss the recently announced Comprehensive Economic and Trade Agreement, and the potential implications this will have on the international IP landscape.

CETA Summary Tabled in House of Commons

A more detailed outline of the Comprehensive Economic and Trade Agreement (CETA) in principle – the Technical Summary of the Negotiated Outcomes: The Canada-EU Comprehensive Economic and Trade Agreement – was tabled by the Canadian Government on October 29, 2013 in the Canadian House of Commons. The detailed outline provides additional insight into the changes that Canada has committed to make to its intellectual property laws.

Pharmaceuticals

CETA represents significant gains for innovative pharmaceutical companies. The changes are discussed in more detail at: http://www.bereskinparr.com/News/id428.

Geographical Indications

Under CETA, Canada will commit to expand the scope and number of protected Geographical Indications (GIs are signs, similar to trademarks, used to indicate that a product comes from a particular geographical region, imbuing the product with certain qualities, characteristics, and reputations), and extend limited protection to others. Currently, Canadian trademark law only protects GIs in relation to certain specified wines and spirits (sections 12(1)(g) and (h)). This has caused some friction with the EU, which protects hundreds of GIs for a variety of products and has been prevented from using certain GI designations on labels in Canada, such as Prosciutto di Parma.

With CETA, Canada will extend GI protection to certain meats and cheeses, including Chabichou du Poitou, Grana Padano, Roquefort, Elia Kalamatas Olives, Aceto balsamico di Modena, Prosciutto di Parma, and Prosciutto di San Daniele. GI protection will not cover Valencia orange, Tiroler bacon, Parmesan, Bavarian beer, or Munich beer. The changes to the GI laws will not affect trademarks containing GIs that are already on the Canadian trademarks Register.

Canada has negotiated limited protection for other GIs. First, to preserve the ability to use what have become common words used by Canadians to identify types of food, Canada will grant GI protection to certain food names in their native language, but not as translated into English or French. For example, Black Forest Ham will be acceptable as a generic term, but the German-language Schwarzwaelder Schinken will not. Canada will also extend limited protection to Asiago, feta, fontina, Gorgonzola and Munster cheeses, allowing continued use on packages where these names already appear, and allowing future use of these names if combined with terms like "kind," "type," style," or "imitation." Further, Canada will permit use of components of multi-part terms, such as "Brie" (but not "Brie de Meaux"), "Gouda" (but not "Gouda Holland"), "Edam" (but not "Edam Holland"), and "Mortadella" and "bologna" (but not "Mortadella Bologna" in combination). Last, Canada negotiated to forgo granting GI status to the term "Budejovicke," which would have conflicted with the trademark BUDWEISER. 

Counterfeiting

CETA tracks Bill C-8 (the Combatting Counterfeit Products Act, formerly Bill C-56, discussed in more detail at http://www.bereskinparr.com/Article/id232/?srch=C-56, http://www.bereskinparr.com/Doc/id231/?srch=C-56, and http://www.bereskinparr.com/Doc/id228/?srch=C-56). Bill C-8 was brought before Parliament on October 28, 2013, and is intended, among other things, to provide Canadian border agents with increased powers to detain infringing and counterfeit products, when implemented. The bill is currently before the Standing Committee on Industry, Science and Technology.

Consistent with Canada's CETA obligations, Bill C-8 will allow border agents to detain any product they believe is not in accordance with Canadian intellectual property and other laws, and to send the rights holder a sample of the products to allow the rights holder to inform the border agency whether or not the product infringes their rights.

Bill C-8 also contemplates the creation of a system allowing a rights holder to request assistance in pursuing remedies for imported and exported products in violation of their intellectual property rights. Under Bill C-8, such a request has a potentially unlimited life: the request would automatically be good for two years, and could be extended by the Minister responsible for such requests every two years as many times as he or she sees fit.

Last, CETA will require, and Bill C-8 already contains, new civil remedy provisions. For example, Bill C-8 will make it an offence to manufacture, possess, import/export, or attempt for the purposes of sale/distribution any product, labels or packaging bearing a trademark that is identical or confusing with one already registered. It will also make it an offence to create and sell such labels. 

Trademark Registration and Industrial Design Protection

While Canada took on no specific commitments in this area, the summary suggests Canada has made a "best endeavours commitment" to "make all reasonable efforts" to comply with international agreements and standards. To this extent, CETA specifically mentions, but the detailed outline provides no further commentary on, the Singapore Treaty on the Law of Trademarks, the Protocol Related to the Madrid Agreement Concerning the International Registration of Marks, and the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.

Plant Breeders Rights and Protections

The summary suggests CETA will not change the current Canadian regime in the Plant Breeders' Rights Act. In the Agreement, both Canada and the EU commit, however, to co-operate to promote and reinforce the protection of plant varieties based on the International Convention for the Protection of New Varieties of Plants.

Copyright Terms

The Agreement tracks Canada's Copyright Modernization Act, implemented in 2012.

Next Steps for CETA

CETA still has a number of hurdles to overcome before it becomes incorporated into Canada's intellectual property laws. First, CETA must be translated into all 23 member languages of the EU. Then, the Agreement must be negotiated and approved by the Canadian Parliament and the provinces, who will integrate the Agreement's requirements into new and existing laws. At the same time, CETA will need to be ratified by all 28 EU member countries before becoming effective in the EU. These steps may cumulatively take several years.

Pending negotiations and the entry into force of CETA, Canada-EU trade relations continue to be guided by the 1976 Framework Agreement for Commercial and Economic Cooperation and other bilateral agreements.

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.

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Authors
R. Scott MacKendrick
Tamara Céline Winegust
 
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