Geographical indications (“GIs”) are a form of trade-mark right that Canada has historically only recognized in relation to wines and spirits. However, the recent implementation of the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union has dramatically expanded GI protection to other food and agricultural products, including cheeses, oils, spices, cured meats, vinegars, fruits, etc.
In addition to expanding their scope, CETA also introduced a detailed and complex web of prohibitions and exceptions with respect to the use of GIs in Canada. For any business engaged in the production of food and agricultural products in Canada, the continued use and proposed adoption of new trademarks with geographic significance will require careful consideration.
What is a GI?
Sometimes referred to as “appellations of origin”, GIs identify agricultural products as originating from a region where a characteristic of the product is essentially attributable to its geographical origin. A protected GI can only be adopted in connection with products originating from the indicated geographic region. Famous examples of GIs include Champagne and Cognac which identify wines and spirits originating in particular regions of France.
The protection of GIs is a contentious issue in trademark law.
Many proponents of GI protection view these designations as an absolute right of the producers in the geographic region. Once recognized, the GI should be entitled to exclusivity even if this means extinguishing prior trade-mark rights for an identical or confusingly similar mark.
On the other hand, trade-mark owners generally believe that any conflict between a GI and a trade-mark should be resolved in each country according to traditional trade-mark principles that give priority to the first user of the mark in that jurisdiction. This is referred to as the principle of “first in time, first in right”.
In more general terms, it is a dispute between private and collective rights: trade-mark owners view their trade-marks as valuable private property rights that should not be subject to “claw back” by a collective; while proponents of GI protection believe that private ownership claims to a trade-mark that is identical or confusingly similar to a GI is merely an attempt to usurp the rights of the collective.
CETA was signed in 2016 to establish a free trade area between Canada and the EU. The Agreement was expected to have wide reaching economic impact including the elimination of tariffs on forestry products, clothing, vehicles, machinery, electrical equipment, medical devices and chemicals, and many food products. While the agreement has not been ratified by all European states, much of it was provisionally implemented on September 21, 2017 when the provisions of the Canada–European Union Comprehensive Economic and Trade Agreement Implementation Act (“CETA Implementation Act”) came into force.
The implementation of CETA has resulted in significant amendments to the Canadian Trade Marks Act as it relates to the protection of GIs.
170 New GIs
Effective September 21, 2017, 170 GIs were automatically recognized for food and agricultural products with no opportunity for third parties to object. This list of GIs includes Asiago, Feta, Kalamata Olives, Prosciutto di Parma, etc.
A full list of the GIs now recognized in Canada is managed by the Registrar of Trademarks and can be found online here.
The expanded list of protected GIs also includes indicators listed in the Canada-Korea Economic Growth and Prosperity Act which came into force on January 1, 2015. For example, Korean Red Ginseng and Icheon Rice are protected GIs.
Securing Protection for New GIs
In addition to creating an expanded list of GIs, CETA also established a mechanism to have new GIs added to the list.
A GI for a product originating in Canada can be protected if it is not the common name of the relevant product in Canada, and is not confusing with a trademark previously used, applied for or registered in Canada. For a product originating outside Canada, the GI must also be protected by applicable law in the territory of origin in order for it to be entered onto the protected list in Canada. Requests to add a GI will only be accepted from a “responsible authority”, which is defined in the Act as “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 this Act”.
After a request has been made, the GI is published on the website of the Canadian Intellectual Property Office and any interested third parties will have two months in which to object to protection of the GI. The grounds for objecting to a GI designation are:
- that the indication is not a geographical indication;
- that the indication is identical to the customary term in common language in Canada which is recognized as the common name for the product;
- unless the product originates from Canada, the GI has not been protected by the law of the territory from which the product originates; or,
- that at the time of GI was published it was confusing with a trademark that was previously: (i) registered; (ii) in use in Canada and not abandoned; or (iii) for which a trademark application was filed in Canada and is still pending.
The process for considering and deciding the outcome of objections is similar to the process in a trademark opposition.
Removal of Geographic Indications from Protection
There is also a limited mechanism for an interested party to apply to the Federal Court to have a GI removed from the protected list of indications. The grounds for removal are substantially the same as those which can be relied upon during objection to a recently filed request for recognition.
However, some GIs cannot be removed from protection. The list of the GIs immune to expungement is contained in Part A of Annex 20 to CETA and is quite extensive. It includes many well-known indications such as “Prosciutto di Parma”, “Parmigiano Reggiano”, “Roquefort”, “Aceto balsamico di Modena” and “Mortadella Bologna”.
Prohibitions and Exceptions
The Trademarks Act now explicitly prohibits the commercial adoption or use of a protected GI or a recognized translation of the GI to identify an agricultural product or food of the same category if it does not originate from the territory indicated by the GI (s. 11.15(1)-(3)).
GI’s protection may also extend beyond the territory of origin to include standards relating to the manner of production or manufacture of the product if territory of origin includes such standards in its laws. Thus, a trader cannot use some GIs to identify a product which originates from the subject country if it does not also meet applicable production standards.
There are exceptions to the broad protection of GIs:
- The adoption or use of a GI which has been authorized by the “responsible authority” is excepted under Section 11.16.
- If a GI is a person’s name or that of the person’s predecessor in title, that person can continue to use the name so long as it is not done in a manner intended to mislead the public.
- If a GI is the customary name or term for the wine, spirit, agricultural product or food in Canada, or the common name of certain agricultural products or food, then it may be exempt from the prohibitions.
- There are also specific exceptions allowing continued use of the new geographical indications for Asiago, Feta, Fontina, Gorgonzola, Munster, Beaufort, Nurnberger Bratwurste and Jambon de Bayonne by persons who had previously sold these products in Canada using the GIs as common names.
- In some instances, Canada is not required to provide an enforcement mechanism to prevent use of GIs in situations where when the use of such terms is accompanied by expressions such as "kind", "type", "style", "imitation" or the like and is in combination with a legible and visible indication of the geographical origin of the product concerned.
- Some of the exceptions will apply on an ongoing basis; whereas others are time limited and will eventually be phased out. The exemptions are fact specific, rather convoluted and not entirely predictable. It is advisable to refer to CETA Appendix 20 to check whether exemptions apply to individual GIs. Appendix 20-A uses a system of asterisks to identify which particular GIs are subject to which particular exemptions. Appendix 20-B provides a short list of names (including “black forest ham” and “parmesan”) which are exceptions and can be used in Canada and incorporated into trademarks.
- Finally, there is a limited exception from the prohibition for some forms of comparative advertising. GIs may not be used on advertising which is located on labels or product packaging, but they may be used in other forms of comparative advertising such as websites, posters, displays etc. (s. 11.16(3)-(4)).
Importing/Exporting Food Products
The provisions in the Trademarks Act which provide for import and export protections to protect trademarked goods against counterfeiting have also been expanded to include protection of GIs, including possible seizure by customs officials.
Agricultural products or foods which bear protected GIs on the products themselves or their labels or packaging are prohibited if the product does not originate from the territory indicated and was not produced or manufactured in accordance with any stipulated standards (s. 51.03(2.2)). There are limited exceptions for items carried by individuals in their luggage for personal use and for goods which are in transit and will not be staying in Canada.
Confusion between GIs and Trademarks
In the absence of trademark registration, a trademark will be considered confusing with a GI identifying an agricultural or food product if the use of both the GI and the trademark would be likely to lead to the inference that the agricultural product or food associated with the GI originates form the same source as the goods or services associated with the trademark.
The listing of a GI will also provide grounds to oppose a trademark application for an agricultural product or food if the trademark includes the name of the GI in whole or in part; the goods belong to the same product category as the GI; and the goods does not originate in the same territory as the GI (s. 12(1)(h.1)).
The implementation of CETA in Canada is a work in progress. We don’t yet know if there will be complete ratification by all European states. The provisional implementation of many other facets of the agreement are also ongoing. With respect to GIs, we will likely see additions and removals from the list of protected indications. Exemptions and transitional provisions will be applied and clarified. For any business engaged in the production of food and agricultural products, it will be important to watch the developments closely and keep an eye on the details.
Disclaimer: The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about specific circumstances.