The Impact of Expanded Regulations Under CETA on Geographical Indications and Your Brand

By David Lotimer, January 8th^{, 2018}

Trademarks are a part of our everyday life. A trademark protects a combination of letters, words, sounds or designs that distinguishes one’s goods or services from those of another in the marketplace. There are specialized trademark rules, including those relating to Geographical Indications (“GIs”) that have the potential to impact specific industries. For example, recent changes in GI law could significantly alter how a wine, spirit, agricultural product or food producer approaches their branding and marketing efforts.

A GI[1] is an indication that identifies a wine or spirit, or an agricultural product or food, as originating in a specific territory. The GI must also be associated with a particular quality, reputation or other characteristic of the wine or spirit or the agricultural product or food that is attributable to its geographical origin. Essentially a GI can add value to your product as it certifies that the product possesses certain qualities or reputation, because of where the product was created. We are all familiar with some common GIs including Champagne (an alcoholic drink produced from grapes grown in the Champagne region of France); Port (a Portuguese fortified wine produced exclusively in the Douro Valley in the northern provinces of Portugal); and Cognac (a variety of brandy named after the town of Cognac, France, produced in the surrounding region).

Prior to Canada-European Union Comprehensive Economic and Trade Agreement (“CETA”)[2], which came into force on September 21, 2017, GIs were used to protect only wines and spirits. CETA implementation has resulted in amendments to the Canadian Trademarks Act (“Act”) that expanded the protection afforded by the Act to a wider range of products to which GIs (including translations of these GIs) can now apply. Certain agricultural products and foods are now afforded the same protection. The amendments have automatically granted GI status to a number of products including Brie de Meaux, and Huile d'olive de Haute-Provence, providing them with legal recognition, and exempting them from objection and cancellation proceedings.

Certain more commonly used GIs have been afforded a more limited type of protection (such as Feta, and Asiago).[3] Users of these particular marks will be exempt from cancellation proceedings if they have been using the mark for 10 years (starting before October 2013), have previously had indications granted, or currently have an applied-for or used trademark on file. As a producer of these products, there is some risk in relying on this exemption. The specific GI use must qualify as trademark use as defined by the Act, otherwise you will not qualify for the exemption. You will also be able to continue to use the more common GIs if they are accompanied by a qualifying term such as “kind”, “type”, “style” or “imitation”.[4] The geographical origin must also be clearly displayed on the packaging in which it is distributed.

A third category of commonly used GIs such as Parmesan, Black Forest Ham, and Valencia Orange can be adopted, used or registered as a trademark without penalty.[5] Additionally, these GIs can be used in comparative advertising that is not placed on labels or packaging, or in the instance that consent was given by the ‘Responsible Authority’.[6]

The implementation of CETA has also provided the Federal Court with exclusive jurisdiction to order the removal of a GI, a procedure which did not previously exist. Moreover, there is a process by which a ‘Responsible Authority’ can apply to have a new GI added to the GI List[7] and includes the following steps:

1. Filing a request with the Trademark Office;

2. Trademark Office reviewing your request;

3. Trademark Office putting out public notification of the GI;

4. Going through an objection proceeding (if a proceeding is initiated[8]); and

5. Entering the new GI on the Official GI list.

If you reference a GI on any of your products, it is important you understand how these rules can impact your business. Contacting an experienced professional who can help you in this understanding could end up being the difference between protection of your brand, and the loss of it.