Amid a string of changes to the Trademarks Act, food and beverage brand owners should be aware of the potential impact that this new legislation will have on their trademark rights in Canada

On September 21 2017 changes to the Trademarks Act designed to increase and strengthen protection for geographical indications (GIs) as part of the Comprehensive Economic and Trade Agreement (CETA) with the European Union came into force. These amendments – as well as other updates to the Trademarks Act expected to be enacted by 2019 – will have a significant impact on the protection of food and beverage-related trademarks in Canada.

Geographical indications

With negotiations commencing in 2009, CETA has been characterised by the government as "by far one of Canada's most ambitious trade initiatives" and includes stricter protection for GIs in Canada.

The purpose of a GI (eg, Champagne) is to signify that a product originates from a particular locality and possesses certain qualities or characteristics attributable to that origin. Use and protection of GIs is common in Europe, but notably less so in Canada. Before the implementation of CETA, GI protection in Canada was confined to wines and spirits listed by the registrar of trademarks; of the 600- plus listed GIs, only around 4% were for Canadian designations. The CETA amendments expand protection to GIs denoting food and other agricultural products, including cheeses and meats.

Under the Trademarks Act, GIs are afforded particular protections and traders are generally prohibited from adopting, using or registering as a mark any matter comprising a protected GI in connection with the same type of product that is denoted, unless the product originates from that region, is made in the manner denoted by the GI, or the GI is used with consent. Exceptions to this include:

  • personal names;
  • certain types of comparative advertising (excluding on labels or packaging);
  • where the GI has lost protection in the country of origin; and
  • certain longstanding uses and generic or commonly used names.

The request for assistance anti-counterfeiting border programme has also been extended to protected GIs. Following CETA, the Trademarks Act now includes a definition and test for assessing confusion between trademarks and GIs, which is similar to the test for assessing confusion between two trademarks. The CETA changes also clarify the procedures for listing future GIs which are seen by many as a welcome change to the regime.

In addition, the changes afford special treatment for GIs listed in CETA – including denominations such as Feta and Prosciutto di Parma. Treaty designated GIs will not be subject to the same practices traditionally associated with GIs. Instead, they will be protected as soon as they are listed and are exempt from both the objection procedure for proposed GIs and the ordinary removal procedure for GIs. Moreover, traders will not be permitted to use certain listed GIs with widespread use in Canada – including Asiago, Feta, Fontina, Gorgonzola and Munster to describe cheeses – if they do not originate in the territory denoted by the GI, unless accompanied by expressions such as 'kind', 'type', 'style' or 'imitation'.

In the short term, implementing CETA extends the GI regime to new food and beverages and expands the list of GIs afforded protection. In the long term, the changes should afford regional authorities greater opportunities to seek protection for names and terms that denote a particular type of good originating in that territory.

Other upcoming changes

In 2014 the government introduced sweeping amendments to the Trademarks Act that are now expected to come into force in early 2019.

Of these, the expanded definition of 'trademark' to include all manner of signs (including taste, texture and scent) and the elimination of use as a registration requirement and 'distinguishing guise' as a discreet category of mark, as well as the expansion of examination to include a mark's distinctiveness, are all anticipated to have particular impact.

Trade dress

At present, trademarks eligible for national protection are practically limited to those comprising words, designs or colours, designs applied to objects or distinguishing guises, and sounds. The amended Trademarks Act provides for the registrability of signs including nontraditional marks (eg, scents, tastes and textures).

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Previously published in www.WorldTrademarkReview.com

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