On May 16, 2017, the government of Canada passed Bill C-30, formally known as “An Act to implement the Comprehensive Economic and Trade Agreement between Canada and the European Union and its Member States and to provide for certain other measures”. The new legislation introduces a number of amendments to the Canadian Trade-marks Act (“Act”) related to the protection of Geographical Indications (“GIs”) in order to fulfill obligations under the Canada-European Union (EU) Comprehensive Economic and Trade Agreement (“CETA”). Most significantly, the newly enacted law expands the protection of GIs in Canada beyond wines and spirits to include a broad array of agricultural products and foods.
A GI is an indication, often but not necessarily a geographical place name, used on a product to indicate that the product originates in a territory of a World Trade Organization member (or a region or locality of such a territory), where a quality or characteristic of that product is essentially attributable to its geographic origin. Until the new legislative changes introduced in Bill C-30, wines and spirits were the only protected GIs in Canada. Examples of such GIs include “Bordeaux”, “Prosecco”, “Cognac” and “Port”. With the implementation of Bill C-30, protection has been expanded to include GIs used in association with agricultural products and foods, such as cheeses, meats and oils.
The amendments to the Act include adding over 170 agricultural product and food GIs to the protected list maintained by the Registrar of Trademarks, including, for example, “Roquefort” cheese, “Prosciutto di Parma” dry-cured meats, and “Huile d’olive de Haute-Provence” olive oil.
In addition to the GIs that have been automatically added to the protected list, other GIs can become recognized and protected in Canada by making a request with the Registrar of Trademarks to have the GI entered on the protected list.
A GI is protectable if it is not the common name for the relevant product in Canada, and, in the case of a GI for an agricultural product or food, is not confusing with a registered Canadian trademark or a trademark that was previously applied for or used in Canada. For a GI for a product originating in a territory outside Canada, the GI must also be protected by applicable law in the territory of origin for it to be entered onto the protected list in Canada.
A request to enter a GI on the list may be made by a “responsible authority”, 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”. Once such a request is made, the GI will be published on the website of the Canadian Intellectual Property Office and interested third parties will have two months in which to object to protection of the GI.
If an objection is received, both the responsible authority and the objector will have the opportunity to file evidence and make submissions. If no objections are raised, or if objections are decided in favour of the responsible authority, the GI will be entered on the GI list. Once entered, proceedings may be brought before the Federal Court of Canada to remove a GI from the protected list.
Subject to certain exceptions, a GI entered on the protected list can only be used in association with a product that originated in the territory indicated by the GI and that is produced or manufactured in accordance with the law applicable in that territory.
The new legislative scheme will not prohibit the use of a GI in comparative advertising (except on product label and packaging), or use of a GI where it is a person’s name and its use will not mislead the public. GIs that have been registered, applied for, or used as trademarks in Canada prior to the GI being entered on the protected list may also continue to be used.
Further, specific products are also exempt from GI prohibitions – for example, the indications “Asiago”, “Feta”, “Φέτα” (Feta), “Fontina”, “Gorgonzola” or “Munster”, or any translation of them in any language, may continue to be used on cheese products in combination with a qualified term (such as “kind”, “type”, “style” or “imitation”), as long as notice of the cheese’s origin is given to the person purchasing the cheese.
Bill C-30 also now prohibits most imports or exports of goods featuring a protected GI, if the use of the GI would not be permitted on such goods in Canada. However, goods may still be imported or exported if they are for personal use, or are merely entering the country temporarily while in transit to their final destination elsewhere.
Responsible authorities owning GIs will also now be able to file a Request for Assistance with the Canadian Border Services Agency. Filing a Request for Assistance involves requesting that customs authorities temporarily detain suspected counterfeit goods at the border. Details on the Request for Assistance process can be found here.
In brief, the changes to the Act broaden the categories of protectable GIs beyond wines and spirits to include agricultural products and foods. The new provisions of the Act also add further prohibitions against unauthorized uses of GIs, clarify the Federal Court’s exclusive jurisdiction to remove a GI from the protected list, and allow responsible authorities to request assistance from customs authorities in detaining suspected contravening goods.