Canada: Expansion Of Geographical Indications Under CETA Now In Effect In Canada

As of September 21, 2017, Canada has implemented a number of amendments to the Canadian Trade-marks Act related to the protection of geographical indications ("GIs"). The changes were implemented as a result of the Comprehensive Economic and Trade Agreement ("CETA") between Canada and the European Union.


A geographical indication serves to identify a product if a quality, reputation or other characteristic of the product is essentially attributable to its geographical origin. It prevents the adoption and use of GIs by a third party whose product does not originate from the territory identified by the GIs.

Previously, GIs only applied to wines and spirits in Canada. Commonly known examples include Champagne, Cognac and Bordeaux, indicating wines and spirits from France. The amendments expanded the protection of GIs to certain agricultural products and foods, including cheeses (e.g., Asiago, Brie de Meaux, Feta), dry-cured meats (e.g., Prosciutto di Parma) and vinegar (e.g., Aceto balsamico di Modena). The current list of GIs can be found on the Canadian Intellectual Property Office's website.


Securing GI Protection

As a result of the CETA, many GIs have been automatically added to the GI list in Canada. This list can be found in Annex 20-A of the CETA.

In order to add a new GI not listed in Annex 20-A, the Responsible Authority1 must go through specific steps. The Canadian Intellectual Property Office ("CIPO") has recently published a new Guideline, outlining these steps, which provides that a new GI request must be reviewed by the Trademarks Branch of CIPO. (Previously, new GIs were added by a process moderated through Agriculture and Agri-Foods Canada.) The process of securing GI protection is summarized below:

File a Request → Review by CIPO → Publication → Objection Proceeding (if any) → Enter New GI on the GI List

Border Security Measures Expanded to GIs

The amendments provide a prohibition on the import and export of goods bearing a protected GI, if the goods do not originate from the territory indicated by the GI or if the goods were not produced in accordance with the law applicable to that territory.

The amendments also expanded Canada's Request for Assistance ("RFA") border security measures to cover GIs. The RFA process allows customs officers to detain suspected counterfeit goods at the border if the rights holders have applied to participate in the RFA process. This process, which was previously only available to registered trademark owners, has now been extended to GI rights owners. Once the goods have been detained, the trademark owner or Responsible Authority for the GI may take further action against the suspected counterfeit goods in Court. Additional information on the Request for Assistance program can be found in our previous publication, BILL C-8 Canada's Combating Counterfeit Products Act.


Prohibition on Use and Adoption of GIs

With respect to wines and spirits, GI protection is limited to those specific products. For example, the protected GI "Champagne" prevents others from using this term on wines that do not originate from France. It will unlikely prevent others from using Champagne on other goods.

The CETA amendments introduced the concept of prohibiting the use and adoption of GIs on agricultural products and foods if the goods are in the "same category". Therefore, in certain cases such as "confectionery and baked products" and "fresh and processed fruits and nuts", protection granted to the GI may cover more than one type of product.

In view of the expansion of GI protection, it is recommended that brand owners, particularly those in the food industry, consult with legal professionals to ensure that their existing and new marketing plans are in compliance with the GI amendments in Canada.

Exceptions to Prohibition on Use and Adoptionof GIs

While the use and adoption of GIs are prohibited, there are exceptions under certain circumstances. The amendments introduced a number of exceptions, including:

  • Consent by the Responsible Authority;
  • Use of a person's name;
  • Comparative advertising (not on labels or packaging);
  • Customary name or term;
  • Specific common name listed in the Trade-marks Act;
  • Specific exceptions allowing use of certain cheeses, namely "Asiago", "Feta", "Φέτα" (Feta), "Fontina", "Gorgonzola" and "Munster";
  • Specific exceptions allowing use of "Beaufort", "Nurnberger Bratwurste" and "Jambon de Bayonne".

Objection Proceedings — Additional Grounds ofObjection

A number of new grounds of objection have been introduced for objection proceedings against new GIs published by CIPO. These do not apply to the Annex 20-A GIs already added. One of the new grounds is that a GI for agricultural products or foods cannot be confusing with a previously used, filed or registered trademark. Therefore, it may be worthwhile for brand owners to consider monitoring publication of new GIs.


1 "Responsible authority" means, in relation to a wine or spirit, or an agricultural product or food of a category set out in the schedule, the person, firm or other entity that, in the Minister's opinion, is, by reason of state or commercial interest, sufficiently connected with and knowledgeable about that wine or spirit or that agricultural product or food to be a party to any proceedings under the Trade-marks Act.

About BLG

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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions