Most of the Canada-European Union Comprehensive Economic and Trade Agreement Implementation Act (“CETA Implementation Act”) came into force on September 21, 2017. Among other things, this Act expands protection for geographical indications (GIs) and is of interest for anyone involved in the agri-food industry in Canada.
A GI means an indication that identifies a product as originating in a territory, a region or a city, where a quality, reputation or other characteristic of that product is essentially attributable to its geographical origin. A GI is overseen by a responsible authority having a state or a trade interest.
Under the Trade-marks Act, no person may adopt or use, in connection with a business, as a trade-mark or otherwise, a GI or a translation of the GI in respect of a product belonging to the same category as the one identified by the GI unless it originates in the territory covered by the GI.
The CETA Implementation Act substantially amends the provisions of the Trade-marks Act regarding GIs.
The biggest change is that GIs will now be available for a vast array of agricultural products or food. The specific categories are set out in a new schedule to the Trade-marks Act.
Before that change, GIs were only open to wine and spirits.
The protection afforded to a GI for agricultural products or food is extended to translations of the GI, as provided by the responsible authority of such a GI.
Some transitional provisions have been set out in light of this major shift.
First, future use of certain cheese indications, including names such as Asiago, has been grandfathered provided that such use is accompanied by a qualifying term such as “kind”, “type”, “style” or “imitation”. Moreover, some common names for agricultural products or food, such as Valencia or Parmesan, are exempted.
Second, a preferential treatment has been granted to more than 170 GIs from the European Union, as well as to some GIs from Korea, which receive an automatic and non-cancelable protection.
Furthermore, ancillary changes have also been adopted.
Regarding oppositions to GIs, the opposition period has been shortened from three to two months. New grounds of opposition to GIs have been added, including the following:
a) The GI is identical to a term customary in common language as the common name for the product;
b) The GI is not protected by the law applicable to the originating territory;
c) The GI identifying an agricultural product or food is confusing with a trade-mark registered, applied for or used in Canada;
d) Grounds of opposition have been set out for translations of GIs.
The Federal Court will now have exclusive jurisdiction to order the removal of a GI or a translation of a GI. Such a procedure did not exist until now.
Among other changes, request for assistance procedures are extended to GIs; it will now be forbidden to use a GI if the product is not produced or manufactured in accordance with the law applicable to the territory; and it will be possible for the responsible authority of a GI to consent to the adoption and use of a GI by a third party.
These changes will certainly have a big impact on some trade-mark holders in Canada, although there is an acquired rights provision for registered, applied for or previously used trade-marks, provided that it has been done in good faith. However, this provision does not seem to apply to existing generic uses of GIs, which could thus be at risk.