Canada: Generic No More—Expanded Protection Of Geographical Indications In Canada

This article was originally published in Blakes Bulletin on Intellectual Property - December 2003

Geographical indications are increasingly important commercial assets. This is highlighted by the recent agreement between Canada and the European Community ("EC"). Geographical indications, also known as appellations of origin, are names applied to products originating in a certain territory, region or locality, where the quality, reputation or other characteristic is essentially attributable to the products’ geographical origin, either alone or in tandem with the use of certain ingredients and/or manufacturing techniques.

The reputation associated with the geographical indication is of vital importance, and false use of a geographical indication may be detrimental to both consumers and legitimate producers. However, where a geographical term is used as the designation of a kind of product, rather than an indication of the place of origin of that product, this term no longer functions as a geographical indication.

Like trade-marks, geographical indications are valuable marketing tools. Unlike a trade-mark, which is used by an owner to distinguish its wares from those of others, a geographical indication is always linked to the quality, reputation or other characteristic of the product. Any business or person whose product meets the definition can use the geographical indication.

Geographical indications are protected in accordance with national laws and, on the international level, by the Agreement on Trade-Related Aspects of Intellectual Property Rights ("TRIPS"), within the general framework of the World Trade Organization ("WTO").

In Canada, the Trade-marks Act ("Act") defines geographical indication in a restrictive way, limited to appellations associated with wines and spirits. However, this does not mean that appellations associated with other goods or services are not capable of being protected in Canada. Products having a given quality, type, kind, reputation, or other characteristic attributable to its geographical origin may be registered as certification marks and protected as such.

TRIPS was concluded in 1994 as a result of extensive multilateral trade negotiations under the auspices of the WTO. The protections afforded to geographical indications of certain wines or spirits were added to the Act by amendments effective January 1, 1996. Those amendments were a result of Canada fulfilling its obligations under TRIPS and to the WTO. In order to comply with TRIPS, several changes were made to the Act.

One. Under Section 2, a "geographical indication" is defined as meaning, in respect of a wine or spirit, an indication that (a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and (b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to that WTO Member.

Although not expressly excluding other wares and services, Section 2 defines a geographical indication only in relation to wines or spirits.

Two. Paragraphs 12(1)(g) and 12(1)(h) of the Act stipulate that a trade-mark is not registrable if it is, in whole or in part, a protected geographical indication, where the trade-mark is to be registered in association with a wine or spirit not originating in a territory indicated by the geographical indication.

Three. Sections 11.14 and 11.15 prohibit the adoption of a protected geographical indication in connection with a business, as a trade-mark or otherwise, identifying a wine or spirit that does not originate in the territory indicated by the geographical indication. Although the Act does not define "business", when used in Subsections 7(a) and 7(b) of the Act, the word is used in the context of "wares, services, or business". Presumably, therefore, a business is something different than a "ware" or a "service", and perhaps is best described as a commercial enterprise.

The Act contains certain exceptions from the prohibitions involving the use of the geographical indications described above. For example, the Act provides that Sections 11.14 and 11.15 do not apply to a Canadian who has used a protected geographical indication in a continuous manner with respect to wares and services in good faith prior to April 15, 1994, or for at least 10 years prior to April 15, 1994. Another exception holds that Sections 11.14 and 11.15 and Paragraphs 12(1)(g) and 12(1)(h) do not apply if the protected geographical indication ceases to be protected in the home country of the WTO Member, or falls into disuse in that country.

Perhaps the most important exception is found in Subsections 11.18(3) and 11.18(4) of the Act. These subsections allow the adoption, use and registration of certain "generic" indications in connection with a business, as a trade-mark or otherwise, for wine or spirits, such as: Champagne, Chablis, Port, Bordeaux, Sherry, Chianti, Grappa, Ouzo and Sambuca.

In June 2003, representatives of the Canadian government and the EC announced an agreement which will, when fully implemented, remove most wine and spirit names from the list of generic names under Subsections 11.18(3) and 11.18(4) of the Act. The agreement has been presented to the European Council for official ratification. The Canadian Parliament must also take further steps to implement the agreement.

As mentioned, the main purpose for the agreement is to halt the generic use in Canada of 21 European geographical indications for wine. The proposed implementation of the agreement is to occur in three stages. First, use of Bordeaux, Chianti, Claret, Madeira, Malaga, Marsala, Medoc/Médoc, and Mosel/Moselle will cease on Canadian wines as soon as the agreement comes into force. Second, use of Bourgogne/ Burgundy, Rhin/Rhine, and Sauterne/Sauternes will cease by December 31, 2008. Third, Chablis, Champagne, Port/Porto, and Sherry will no longer be used after December 31, 2013. The agreement also proposes to phase out, within two years, the generic status of certain spirit names: Grappa, Jagertee, Korn, Ouzo, and Pacharan.

As a result of this agreement, these names will no longer be barred from registration as geographical indications. As a result, unauthorized sale or use of wines or spirits labeled with these geographical indications could be prevented. In exchange, the EC will protect Canadian Rye Whiskey and Canadian Whiskey as a distinctive product of Canada. Further, Canada secured concessions regarding the importation of Canadian Ice Wine into Europe. Finally, the EC will protect geographical indications for wines originating from certain regions of Canada, including the Fraser Valley, Lake Erie North Shore, the Niagara Peninsula, the Okanangan Valley, Pelee Island, the Similkameen Valley, and Vancouver Island.

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.