As reported in our October 30, 2013 IP Update, the Canadian government tabled a technical summary report on October 29, 2013, which contained details concerning the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union. An agreement in principle was reached on October 18, 2013, concluding more than four years of negotiations.
CETA includes numerous provisions pertaining to geographical indications (GIs) which will result in their expanded protection in Canada, while preserving existing Canadian trade-mark rights and limiting the impact on current users. The provisions are designed to address the European Union’s request to extend GI protection in Canada beyond wine and spirits to foods and beer.
A GI is currently defined in the Canadian Trade-marks Act (“Act”) as an indication that identifies the wine or spirit as originating in the territory, region or locality of a member of the World Trade Organization, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin. This definition, as well as other amendments to the Act designed to deal with GIs covering wine and spirits, were introduced in1996 as a result of the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights
The 1996 amendments introduced new sections to the Act creating:
- a list of protected GIs to be kept under supervision of the Registrar;
- an opposition procedure for suggested additions to the list;
- prohibitions against the adoption or use, as a trade-mark or otherwise, of a protected GI in relation to wine or spirits not originating in the territory indicated by the protected GI;
- exceptions in the case of personal names and comparative advertising, in certain cases of prior use by a Canadian and in the case of disuse, customary names and generic names; and
- a prohibition against the registration of protected GIs as a trade-mark.
The above distinct protection as a GI is limited to GIs relating to wine and spirits. GIs relating to other products can only find a level of protection by registration as a certification mark. If the CETA is ratified, the distinct protection currently only granted to GIs relating to wine and spirits will possibly extend to GIs covering a broad range of agricultural products such as cheese, meats and olives.
While GI protection is expected to expand significantly, the CETA also includes provisions to preserve Canadian trade-mark rights and limit the impact on current users. For example, the following terms commonly employed in Canada will continue to be free for use in the Canadian market, in both official languages, regardless of product origin:
- Valencia orange,
- Black Forest ham,
- Parmesan and
- Bavarian beer.
Current users of Asiago, Feta and Gorgonzola will be able to continue using such terms. Future users will only be able to use such terms if accompanied by expressions such as “type,” “style” or “imitation.” Canadian producers also preserve the ability to use customary names of a plant variety or animal breed. For example, the Kalamata variety of olives can be sold in packaging bearing the variety name. In addition, Canadian producers maintain the ability to use components of mutli-part GIs. For example, while “Brie de Meaux” will be protected, the term “brie” can be used on its own.
As noted in our earlier IP Update, the CETA has not yet been published nor finalized. Consequently, it is possible that the commitments relating to GIs may change. Moreover, ratification is not expected until 2015, and the statutory and regulatory amendments required to implement the CETA are still several years away. Nonetheless, the Canadian and European food and beer industries need to be mindful of the expanded protection that will be afforded to GIs in the future.