Adoption and use of certain generic wine names no longer permitted

Canada

Long-awaited amendments to the Trademarks Act came into force on December 31 2008. 

The act provides a mechanism for the protection as geographical indications of terms which identify wines and certain other products as originating from a particular place or region. The act prohibits the adoption and use in connection with a business, as a trademark or otherwise, of a geographical indication “identifying a wine in respect of a wine not originating in the territory indicated by the protected geographical indication” (Section 11(14) of the act).
 
However, until recently, the act also provided an exception to the broad prohibition for certain particular geographical indications which were deemed to be generic names for wines in Canada available for use by all on labels of wines sold in Canada (Sections 11(18)(3)(f) to (k)). The exception also permitted third parties to register trademarks containing these elements.
 
Effective December 31 2008, the act was amended to remove the exception provided for Burgundy, Bourgogne, Rhine, Rhin, Sauterne and Sauternes (pursuant to the Order Amending Subsections 11(18)(3) and (4) of the Trademarks Act).
 
The amendments to the act arise from one of Canada’s obligations under the agreement between Canada and the European Union on trade in wines and spirit drinks, which came into force on June 1 2004. Under this agreement, Canada agreed that names identifying wines that are officially recognized and protected as a geographical indication under the Agreement on Trade-Related Aspects of Intellectual Property Rights would be eligible for registration in Canada as protected geographical indications for wine. 
 
However, Canada’s commitments under the EU-Canada agreement were subject to a transitional period that allowed Canada to delete progressively the exceptions provided under the act for generic wine names. The first step of this phase-out initiative was to remove the names Bordeaux, Chianti, Claret, Madeira, Malaga, Marsala, Medoc, Médoc, Mosel and Moselle from the list of generic names, effective June 1 2004. The second step was reflected by the recent amendments to the act. The last step will require the removal of the names Champagne, Port, Porto, Sherry and Chablis from the list of generic wine names, effective December 31 2013.
 
The Canadian Trademark Register currently has no active trademark registrations for marks containing the names Burgundy, Bourgogne, Rhine, Rhin, Sauterne or Sauternes. Although it is possible that a few wine producers might be using names containing such elements to commercialize their wines in Canada, producers located in Ontario and British Columbia that are members of the Vintners Quality Alliance (VQA) would not do so, as they are already prohibited from using foreign geographical names as a pre-condition to obtaining VQA certification.
 
It is likely that, as a result of the recent amendments, applications will be filed to add Burgundy, Bourgogne, Rhine, Rhin, Sauterne and Sauternes to the list of geographical indications protected in Canada.
 
Josée Thibodeau, Osler Hoskin & Harcourt LLP, Ottawa

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