Canada: Geographical Indications In Canada

Last Updated: February 2 2018
Article by John McKeown

What is a Geographical Indication?

A geographical indication is a trademark used on products that have a specific geographical origin and possess qualities or a reputation that are due to that origin. In order to function as a geographical indication, the indication must identify a product or food as originating in a specific territory or region or locality in a territory. In addition, the qualities, characteristics or reputation of the product should be essentially due to the place of origin. Since the qualities depend on the geographical place of production, there must be a clear link between the product and its original place of production. CHIANTI and CHAMPAGNE are examples of well-known geographical indications.

There have been ongoing negotiations within the WTO to attempt to establish a multi-lateral system for the recognition of geographical indications but there have been disagreements among the parties and a failure to reach a consensus. One area of disagreement has been how geographical indications should be protected.

The CETA Agreement

The Canada and European Union Comprehensive Economic and Trade Agreement (CETA) is a free trade agreement which is broader in scope than the North American Free Trade Agreement. Approximately 98% of the tariffs between Canada and the EU will be eliminated when the agreement comes into effect.

On February 29, 2016, Canada's Minister of International Trade and the European Union's Commissioner for Trade announced the completion of the legal review of CETA.1 The agreement has been approved by Canada and the EU, signed by Canada and EU countries, and the steps necessary to bring the relevant policies, regulations and legislation into conformity with the obligations under CETA is well advanced in Canada.

Implementation

The Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act2  amends the Trade-marks Act (Act) to:

  • protect the EU geographical indications found in Annex 20-A of the Agreement;
  • provide a mechanism to protect other geographical indications with respect to agricultural products and foods;3
  • provide for new grounds of opposition, a process for cancellation, exceptions for prior use for certain indications, for acquired rights and for certain terms considered to be generic; and
  • transfer the protection of the Korean geographical indications listed in the Canada–Korea Economic Growth and Prosperity Act into the Trade-marks Act.

Previously protection under the Act was only made available to geographical indications for wine and spirits. The CETA amendments expand the protection to geographical indications denoting food and other agricultural products, including cheeses and meats.

The Act has been amended to add new procedures for obtaining protected geographical indications for wines and spirits and agricultural products and foods, for dealing with statements of objections and related matters.

Schedule 6 Indications

Without complying with the process of objection the indications set out in Schedule 6 to the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act have been added to the list of geographical indications protected under the Act.4 In addition these indications are insulated from potential expungement and application of certain exemptions has been removed.5

Schedule 6 contains all of the geographical indications found in part A of Annex 20-A. There are 172 indications listed on the schedule including the following well-known designations: Feta, Roquefort, Camembert de Normandie, Brie de Meaux, Φέτα" (Feta), Gorgonzola, Gouda Holland, Edam Holland for cheeses, Prosciutto di Parma for dry-cured meats and Ελιά Καλαμάτας and its translation Elia Kalamatas for olives.

For geographical indications not included in Schedule 6 an application for a geographical indication must be approved by the responsible Minister and then published for objection purposes.6 Such geographical indications and their translations are also subject to potential expungement7 but not the Schedule 6 geographical indications8 and specified Korean geographical indications.9 The ability to seek protection as a geographical indication is not limited to the countries of the European Union and any responsible authority10 can apply for protection so long as provisions of the Act are satisfied.

The Prohibition

In general terms no person shall adopt or use in connection with a business as a trademark or otherwise a protected geographical indication to identify a product that does not originate in the territory indicated by the protected geographical indication, to identify a product not produced or manufactured in accordance with the law of the territory to which protected geographical indication relates or a translation in any language of the protected geographical indication in respect of that product.11

The Exceptions

There are number of exceptions to the prohibitions described above:

  1. The authority responsible for the protected geographical indication consents;12
  2. The use by a person in course of trade of the person's name or the name of the person's predecessor in title, except where the name is used in such a manner as to mislead the public;13
  3. The use of a protected geographical indication or any translation of it in comparative advertising except comparative advertising on labels or packaging;14
  4. The adoption use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of spirits: Marc, Sambuca, Geneva Gin, Genièvre, Hollands Gin, London Gin, Schnapps, Malt Whiskey, Eau-de-vie, Bitters, Anisette, Curacao and Curaçao; 15
  5. The adoption use or registration as a trademark or otherwise, in connection with a business, of the following indications in respect of an agricultural product or food: Valencia Orange, Orange Valencia, Valencia, Black Forest Ham, Jambon Forêt Noire, Tiroler Bacon, Bacon Tiroler, Parmesan, St. George Cheese, Fromage St-George, and Fromage St-Georges; 16
  6. Long-standing use in Canada of specified generic, commonly used names;17 included in this category are the use, in connection with a business, of any of the indications "Asiago", "Feta", "Φέτα" (Feta), "Fontina", "Gorgonzola" or "Munster", or any translation of them in any language, by a person if they or their predecessor in title used the indication or the translation in relation to any business or commercial activity in respect of an agricultural product or food of the category of cheeses, before October 18, 2013.18 In addition the use of these indications if (i)a qualifying term such as "kind", "type", "style" or "imitation" is used in connection with the indication or the translation; and (ii) the geographical origin of the cheese is clearly displayed on the cheese or on the packaging in which it is distributed, or is in any other manner associated with the cheese so that notice of the cheese's origin is given to the person to whom the cheese is transferred;19
  7. more qualified exceptions apply to the use, in connection with a business, of the indications "Beaufort", "Nürnberger Bratwürste" and "Jambon de Bayonne";20
  8. if the geographical indication has ceased to be protected by the law applicable to the territory associated with it; 21
  9. the adoption, use or registration as a trademark in good faith before prescribed dates of the protected geographical indication or a translation of it if a person has in good faith filed an application or secured a registration or acquired rights through use; 22
  10. the adoption or use of a trademark by a person if no proceedings are taken to enforce sections 11.14 and 11.15 in respect of that person's use or adoption of the trademark within five years after use of the trademark by that person or that person's predecessor-in-title has become generally known in Canada or the trademark has been registered by that person in Canada, unless it is established that that person or that person's predecessor-in-title first used or adopted the trademark with knowledge that such use or adoption was contrary to section 11.14 or 11.15, as the case may be.23

Objections

When an application for a protected geographical indication is published it is possible to object to the indication within two months after publication.24 The statement of objection with respect to an indication may be based on any of the following grounds:

(a) that, when the statement by the Minister was published, the indication was not a geographical indication;

(b) that, when the statement by the Minister was published, the indication was identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;

(c) that, except in the case of an indication identifying a wine or spirit or an agricultural product or food as originating in Canada, when the statement by the Minister was published, the indication was not protected by the law applicable to the territory in which the wine or spirit or the agricultural product or food was identified as originating;

(d) in the case of an indication identifying an agricultural product or food, that, when the statement by the Minister was published, the indication was confusing with

(i) a registered trademark,

(ii) a trademark that was previously used in Canada and that has not been abandoned, or

(iii) a trademark in respect of which an application for registration was previously filed in Canada and remains pending. 25

A statement of objection with respect to a translation may be based on any of the following grounds:

(a) that, when the statement by the Minister was published, the translation was not a faithful translation of the indication;

(b) that, when the statement by the Minister was published, the translation was identical to a term customary in common language in Canada as the common name for the agricultural product or food;

(c) that, when the statement by the Minister was published, the translation was confusing in the same fashion as the indication.26

The provisions of the Act amended by the Combating Counterfeit Products Act have been further amended to protect geographical indications under the Border Enforcement regime. 27

Conclusion

While some argue that these changes favour European-based geographical indications and provide fewer benefits for domestic rights holders we will have to see how it all works out.

Footnotes:

1. The legally reviewed final version of the text is currently available at the following link:

http://trade.ec.europa.eu/doclib/docs/2016/february/tradoc_154329.pdf

2. Bill C-30 in force September 21, 2017.

3. The categories of agricultural products and foods are set out in a schedule to the Act. In addition the Governor in Council may, by order, amend the schedule by adding or deleting a category of agricultural product or food- section 11.24.

4. Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act section 115 and schedule 6 currently available at http://www.parl.ca/DocumentViewer/en/42-1/bill/C-30/royal-assent

5. Section 11.22.

6. Sections 11.12 (2). A request to have a geographical indication (GI) entered on the list of GIs is initially made to CIPO. The request is reviewed and when it meets the criteria to be entered on the list of protected GIs, CIPO will recommend that the Minister publish a statement proposing that the indication be entered on the list of GIs. See Process to Request that a Geographical Indication to be Entered on Canada's List of Geographical Indications currently on the CIPO website at http://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/wr04244.html?Open&wt_src=cipo-tm-main&wt_cxt=apply

7. Section 11.21.

8. Section 11.22.

9. Section 11.23.

10. See section 11.11 (1) for the definition of this term.

11. Sections 11.14 and 11.15

12. Section 11.16 (1).

13. Section 11.16 (2).

14. Section 11.16 (3).

15. Section 11.18 (4).

16. Section 11.18 (3).

17. Sections 11.17 and 11.18 (4.1).

18. Section 11.17 (3).

19. Section 11.16 (4).

20. Section 11.17(5)-(7) and see the transitional provisions set out in section 68.1.

21. Section 11.18 (1).

22. Section 11.2. Section 20 (2) provides that the registration of the trademark does not prevent a person from making any use of any indications set out in in subsection 11.18(3) in association with a wine, any of the indications mentioned in section 11.18(4) in association with a spirit or any of the indications mentioned in section 11.18(4.1) in association with an agricultural product or food.

23. Section 11.19(1).

24 Section 11.13.The objection process is similar to an opposition of a trademark. CIPO has published a practice notice indicating that the provisions set out in the practice notice entitled Practice in Trademark Opposition Proceedings in effect since March 31, 2009 will apply mutatis mutandis to objection proceedings under section 11. 13 of the Act – Practice in Objection Proceedings under Section 11. 13 of the Trademarks Act.

25. Subsection 11.13 (2).

26. Section 11.13 (2.1).

27 Section 51.03(3).and see chapter 5, part 5.

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 Mondaq.com.

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

Authors
John McKeown
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Goldman Sloan Nash & Haber LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
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
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
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

Mondaq.com (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 www.mondaq.com

To Use Mondaq.com 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.

Disclaimer

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.

General

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