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Canada: Broadened protection for GIs under CETA

On May 16 2017, Bill C-30, the bill to implement the Canada-European Union Comprehensive Economic and Trade Agreement (CETA), received Royal Assent. The legislation contains a number of provisions amending the Canadian Trade-marks Act pertaining to geographical indications (GIs). In particular, the provisions expand GI protection in Canada beyond wine and spirits to agricultural products and food.

Prior to the legislative changes introduced in Bill C-30, a GI was defined as an indication that identifies a wine or spirit as originating in a 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. Examples of protected GIs for wine include Prosecco, Champagne and Bordeaux. Under Bill C-30, the definition of protected GIs has been expanded to include agricultural products and food.

The Registrar of Trade-marks maintains a list of protected GIs, to which over 170 agricultural product and food GIs are added under Bill C-30, including Roquefort for cheese and Aceto balsamico di Modena for vinegar. Requests may be submitted to have other GIs entered on the list of protected GIs by a responsible authority sufficiently connected with and knowledgeable about the wine, spirit, agricultural product or food. The GI request will be published on the website of the Canadian Intellectual Property Office. An interested person may then object to a GI by filing a statement of objection within two months after the publication of the GI.

Under the current Act, grounds for objection to a GI include that the indication is not a geographical indication. Under the Bill C-30 amendments, grounds of objection will now also include: the indication is identical to a term customary in common language in Canada as the common name for the product; the indication is not protected by the law applicable to the territory in which the product is identified as originating (except those originating in Canada); and, for indications identifying an agricultural product or food, the indication is confusing with an existing trade mark that is registered, used in Canada, or for which an application has been filed.

Subject to certain exceptions, protected GIs may not be used in association with products that do not originate in the specified territory identified on the list or are not produced or manufactured in accordance with the law applicable to that territory. Exceptions include certain allowances for comparative advertising, use of a person's name, continued and similar use of an indication in association with a wine or spirit, and various indications of several specific categories of cheese, such as Asiago and Feta, in combination with a qualified term such as "type", "style" or "imitation".

The changes brought in by Bill C-30 broaden GI protection in Canada, while preserving existing Canadian trade mark rights and limiting the impact on current users.

Tamara O’Connell

Smart & Biggar/ Fetherstonhaugh

55 Metcalfe Street Suite 900

PO Box 2999 Station D

Ottawa ON  K1P 5Y6

Tel: 613 232 2486

Fax: 613 232 8440

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