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 Act[2] 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 expungement[7] but not the Schedule 6 geographical indications[8] 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 authority[10] 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:
- The authority responsible for the protected geographical indication consents;[12]
- 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]
- The use of a protected geographical indication or any translation of it in comparative advertising except comparative advertising on labels or packaging;[14]
- 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]
- 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]
- 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]
- more qualified exceptions apply to the use, in connection with a business, of the indications “Beaufort”, “Nürnberger Bratwürste” and “Jambon de Bayonne”;[20]
- if the geographical indication has ceased to be protected by the law applicable to the territory associated with it; [21]
- 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]
- 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.
Notes:
[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.
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.
©2017 John S. McKeown