A recent decision of the Trade-marks Opposition Board shows the problems that can arise with a GI.
Geographical Indications
Geographical indications (GIs) are a type of intellectual property, closely related to a trade mark. The concept of a GI as a type of intellectual property developed in European countries, and legal provisions for their protection are available in the European Community (EC). In 1994, the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) established binding international obligations for the protection of GIs but does not specify how GIs are to be protected in individual countries.
Canada has not created a distinct form of protection for GIs other than for wines and spirits but GIs may be protected in a number of ways including obtaining a registration as a certification mark under the Trade-marks Act.
Certification Marks
The Trade-marks Act provides that “certification mark” means a mark that is used for the purpose of distinguishing or so as to distinguish wares or services that are of a defined standard with respect to a) the character or quality of the wares or services; b) the working conditions under which the wares have been produced or the services performed; c) the class of persons by whom the wares have been produced or the services performed; or d) the area within which the wares have been produced or the services performed. The certification mark must distinguish the wares or services it is used with from wares or services that are not of the defined standard.
A certification mark may be adopted and registered only by a person who is not engaged in the manufacture, sale, leasing or hiring of wares or performance of services such as those in association with which the certification mark is used.
The owner cannot use the certification mark directly but may licence others to use the mark in association with wares or services that meet the defined standard. Use by a licensee is deemed to be use by the owner.
The owner of a registered certification mark may prevent its use by unlicensed persons or by licensed persons who use the mark in association with wares or services in respect to which the mark is registered but to which their licence does not extend.
A geographical certification mark descriptive of the place of origin of wares or services may be registered by an administrative authority or commercial association for a country, state, province or municipality including or forming part of the area indicated by the mark, but the owner of such a mark must permit the use of the mark in association with any wares or services produced or performed in the area in which the mark is descriptive.
It is the position of the Canadian Government that certification marks provide a level of protection that complies with TRIPS for the protection of Gis.
The Application
On October 19, 1984, Consorzio del Prosciutto di Parma (Applicant) filed an application to register PROSCIUTTO DI PARMA (Mark) as a certification mark for “ham”. The defined standard provides that the hams must be prepared in a region of Italy which includes the valleys, hills and mountain areas of the Province of Parma. The mode of production and the characteristics of the product are set out in an Italian statute, regulations and statutory instruments.
Approximately 27 years ago an examiner’s report was issued against the application, taking the position that the certification mark was not registrable as it was confusing with Maple Leaf Meats Inc.’s (Opponent) trade mark PARMA, which was registered for use in association with various meats. For 22 years the Applicant attempted to overcome the Examiner’s objection. It commenced section 45 proceedings, not once but twice, in an effort to have the Opponent’s registration expunged on the basis that the opponent’s mark was not in use; it was successful only in having some of the specific meats originally listed in the Opponent’s statement of wares removed from the registration. It also unsuccessfully pursued an expungement action in the Federal Court
Notwithstanding this lack of success the Applicant eventually overcame the examiner’s report and the application was advertised but opposed by the Opponent.
The Opposition
The parties filed a significant amount of evidence but the Hearing officer concluded that the Applicant had not overcome the its onus to show that there was not a reasonable probability of confusion between the marks in issue. While the history and reputation of the Applicant’s Mark was impressive in other parts of the world the Applicant has not yet used the Mark in Canada. In Canada the Opponent owns a mark that has been registered for more than 40 years and was currently in active use, the parties’ wares and their channels of trade overlap and the Applicant’s mark contains the Opponent’s mark in its entirety.
Comment
The decision is consistent with other Canadian decisions that have refused to protect the rights relating to a GI when there has been substantial prior use of the mark that makes up the GI or a substantially similar mark by a Canadian entity before the assertion of such rights. In other words the applicant for a GI, unless it relates to a wine or spirit, does not receive special treatment and is treated like any other applicant for a trade mark. A form of special treatment is provided for GIs for wines and spirits under the Trade-marks Act. Any other special treatment must be the subject of trade negotiations between the relevant governments and subsequent legislation.
John McKeown
Goldman Sloan Nash & Haber LLP
480 University Avenue, Suite 1600
Toronto, Ontario M5G 1V2
Direct Line: (416) 597-3371
Fax: (416) 597-3370
Email: mckeown@gsnh.com
These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.