As reported in our October 30, 2013
IP Update, the Canadian government tabled a technical summary
report on October 29, 2013, which contained
details concerning the Comprehensive Economic and Trade Agreement
(CETA) between Canada and the European Union. An agreement in
principle was reached on October 18, 2013, concluding more than
four years of negotiations.
CETA includes numerous provisions pertaining to geographical
indications (GIs) which will result in their expanded protection in
Canada, while preserving existing Canadian trade-mark rights and
limiting the impact on current users. The provisions are designed
to address the European Union's request to extend GI protection
in Canada beyond wine and spirits to foods and beer.
A GI is currently defined in the Canadian Trade-marks
Act ("Act") as an indication that
identifies the wine or spirit as originating in the territory,
region or locality of a member of the World Trade Organization,
where a quality, reputation or other characteristic of the wine or
spirit is essentially attributable to its geographical origin. This
definition, as well as other amendments to the Act
designed to deal with GIs covering wine and spirits, were
introduced in1996 as a result of the World Trade Organization
Agreement on Trade-Related Aspects of Intellectual Property
The 1996 amendments introduced new sections to the Act
a list of protected GIs to be kept under supervision of the
an opposition procedure for suggested additions to the
prohibitions against the adoption or use, as a trade-mark or
otherwise, of a protected GI in relation to wine or spirits not
originating in the territory indicated by the protected GI;
exceptions in the case of personal names and comparative
advertising, in certain cases of prior use by a Canadian
and in the case of disuse, customary names and generic names;
a prohibition against the registration of protected GIs as a
The above distinct protection as a GI is limited to GIs relating
to wine and spirits. GIs relating to other products can only find a
level of protection by registration as a certification mark. If the
CETA is ratified, the distinct protection currently only granted to
GIs relating to wine and spirits will possibly extend to GIs
covering a broad range of agricultural products such as cheese,
meats and olives.
While GI protection is expected to expand significantly, the
CETA also includes provisions to preserve Canadian trade-mark
rights and limit the impact on current users. For example, the
following terms commonly employed in Canada will continue to be
free for use in the Canadian market, in both official languages,
regardless of product origin:
Black Forest ham,
Current users of Asiago, Feta and Gorgonzola will be able to
continue using such terms. Future users will only be able to use
such terms if accompanied by expressions such as "type,"
"style" or "imitation." Canadian producers also
preserve the ability to use customary names of a plant variety or
animal breed. For example, the Kalamata variety of olives can be
sold in packaging bearing the variety name. In addition, Canadian
producers maintain the ability to use components of mutli-part GIs.
For example, while "Brie de Meaux" will be protected, the
term "brie" can be used on its own.
As noted in our earlier IP Update, the CETA has not yet been
published nor finalized. Consequently, it is possible that the
commitments relating to GIs may change. Moreover, ratification is
not expected until 2015, and the statutory and regulatory
amendments required to implement the CETA are still several years
away. Nonetheless, the Canadian and European food and beer
industries need to be mindful of the expanded protection that will
be afforded to GIs in the future.
The preceding is intended as a timely update on Canadian
intellectual property and technology law. The content is
informational only and does not constitute legal or professional
advice. To obtain such advice, please communicate with our offices
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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