Expanded protection for geographical indications introduced

On October 29 2013 the Canadian government tabled a technical summary report, 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.

The CETA includes numerous provisions pertaining to geographical indications which will result in their expanded protection in Canada, while preserving existing Canadian trademark rights and limiting the impact on current users. The provisions address the European Union's request to extend geographical indication protection in Canada beyond wine and spirits to foods and beer.

The Canadian Trademarks Act defines a 'geographical indications' as an indication that identifies a wine or spirit as originating in the territory, region or locality of a member of the World Trade Organisation (WTO), where a quality, reputation or other characteristic of that wine or spirit is essentially attributable to its geographical origin. This definition, as well as other amendments to the act designed to deal with geographical indications covering wine and spirits, was introduced in 1996 as a result of the WTO's Agreement on Trade-Related Aspects of Intellectual Property Rights.

The 1996 amendments introduced new sections to the act, creating:

• a list of protected geographical indications 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 trademark or otherwise, of a protected geographical indication in relation to wine or spirits not originating in the territory indicated by the protected geographical indications;
• 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 geographical indications as trademarks.

The above protection as a geographical indication is limited to geographical indications relating to wine and spirits. Geographical indications relating to other products can achieve a level of protection only by registration as a certification mark. If the CETA is ratified, the protection granted to geographical indications relating to wine and spirits may extend to geographical indications covering a broad range of agricultural products, such as cheeses, meats and olives.

While geographical indication protection is expected to expand significantly, the CETA also includes provisions to preserve Canadian trademark 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 also be able to continue using such terms. Future users will be able to use such terms only if accompanied by expressions such as 'type', 'style' or 'imitation'. Canadian producers also retain the ability to use customary names of plant varieties and animal breeds. For example, the Kalamata variety of olive can be sold in packaging bearing the variety name. In addition, Canadian producers maintain the ability to use components of multi-part geographical indications. For example, while 'Brie de Meaux' will be protected, the term 'brie' can be used on its own.

As the CETA has not yet been finalised or published, the commitments relating to geographical indications 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 should be mindful of the expanded protection that will be afforded to geographical indications in the future.

Geneviève M Prévost, Smart & Biggar/Fetherstonhaugh, Toronto