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The Comprehensive Economic and Trade Agreement is likely to have a significant impact on geographical indications in Canada, and rights owners need to be prepared for the new regime, say Suzanne Antal and Micheline Dessureault of Joli-Coeur Lacasse Avocats.
September 21, 2017 will mark the provisional entry into force of the Comprehensive Economic and Trade Agreement (CETA). In Canada, Bill C-30 was introduced on October 31, 2016 to implement CETA. One of the primary objectives of CETA is that it will eliminate over 98% of customs fees imposed on goods between the EU and Canada.
While CETA covers a broad spectrum of trade issues, the most significant change on the trademark front is the expansion and protection of geographical indications (GI).
Canada’s Trade-marks Act already has a comprehensive system of registration for GIs. Currently, GIs are only recognised with respect to a limited list of wines and spirits that originate from the territory of a member of the World Trade Organization, ie, a region or locality of the territory where a quality, reputation or any other characteristic of the wine or spirit is attributable to its geographic origin.
The Trademarks Registrar will continue to be responsible for maintaining the list of protected GIs and this will remain unchanged. Presently an application for a GI must be made at Agriculture and Agri-Food Canada, c/o Canadian Intellectual Property Office (CIPO) by a “responsible authority” that is “sufficiently connected with and knowledgeable of that wine or spirit”. New GIs will probably travel the same route.
There is no provision in CETA which would oblige Canada to adopt a sui generis approach to GIs such as in the EU. However, the agreement does reflect Canada’s resolve to adhere to the EU’s regulations.
“CETA will stop dual litigation, so if a generic company challenges an innovator’s patent, it will be possible for the innovator to sue for patent infringement right away.”
Under Bill C-30, the definition of GIs will expand to cover other agricultural products and foodstuff such as cheese, milk, olives, beer, oils, meats, rice, hops, baked products, pasta and products of the milling industry and processed agricultural products such as essential oils.
Prohibited uses: A few well-known product names such as Asiago, Fontina, Gorgonzola, Münster and Feta can be still commercially used in Canada, provided that they are made distinguishable by adding the qualifiers “imitation”, “style”, “kind”, “type” or the like. However, those who produced these cheeses before October 2013 may continue to use these words without the qualifiers.
Similarly, indications for “Jambon de Bayonne” and “Beaufort” will not be permitted unless their use had been maintained for ten years before October 2013, and indications for “Nurnberger Bratwürste” will be permitted if the use had been maintained for five years.
Common use exceptions: These include commonly used English and French names for agricultural products or foods such as “Bavarian Beer”, “Black Forest Ham”, “St. George Cheese”, “Parmesan” or “Valencia Orange”. In addition, Canadian producers will be able to use a constituent of a GI. For example, “Brie” can be used on its own whereas “Brie de Meaux” will be protected.
Prohibitions will not apply to words that are also plant varieties or animal breeds.
Other exceptions concern the use of a person’s name, unless it is misleading or used in comparative advertising (except on labels and packaging) or the continuous use of the name of a wine or spirit by a Canadian before April 1994.
Confusion: A trademark will be deemed to be confusing with a GI if both would likely lead to the inference that the goods originate from the same source. The factors to consider are similar to those used to determine confusion between trademarks.
Objections: Third parties may raise objections on various grounds within two months after the authorities publish the GI on the website of the CIPO. Objections apply to both GI and translations. In addition to confusion, a third party may challenge the validity of the GI, its legitimacy in the country of origin or on the grounds that it is a common name for the goods. Parties will be able to file evidence and to make submissions.
Customs: The Customs Request for Assistance Regime will also become available for owners of GIs. Under CETA, Canada will prohibit most imports or exports of goods featuring a protected GI if the use of the GI is not permitted on such goods in Canada. However, goods can be imported or exported if they are for personal use or transiting through Canada.
Existing trademark rights: A GI should not cause confusion with a registered Canadian trademark or a trademark that was previously applied for or used in Canada.
What the future holds
Time will tell whether Canada, like the EU, will become a key player in the GI industry. However, at the moment, amendments relating to GIs seem to favour the EU products.
It will also be time for Canadian provinces to harness the potential of these new GIs. Quebec has already recognised, among other GIs, the “agneau de Charlevoix” (the Charlevoix lamb) and the “maïs sucré de Neuville” (Neuville sweet corn); other Canadian provinces have their own GIs.
Steps should be taken by the provinces to have local GIs protected by the CIPO. Otherwise, these, “produits du terroir” will remain charming but unprotected.
Suzanne Antal is a registered trademark agent at Joli-Coeur Lacasse Avocats. Her practice extends to all aspects of trademark clearance, strategy, prosecution, opposition and cancellation proceedings. She is a frequent speaker and writer on trademark matters. She is an active member on various committees related to Canadian and international trademark protection. She can be contacted at: firstname.lastname@example.org
Micheline Dessureault is a partner at Joli-Coeur Lacasse Avocats and director of the intellectual property and international business law departments. She was admitted to the Quebec Bar in 1986. She regularly publishes and acts as a speaker on IP and international commerce issues. She can be contacted at: email@example.com
Joli-Coeur Lacasse Avocats, Suzanne Antal, Micheline Dessureault, Canada, trademark, CETA