International report - CETA to come into force – things to know about geographical indications 20 Sep 17
Bereskin & Parr LLP - Canada
The Canadian government has chosen September 21 2017 as the date on which the majority of the act implementing the Comprehensive Economic and Trade Agreement (CETA) between Canada and the European Union will come into force. Negotiations relating to this trade agreement began in 2009, and the coming into force represents a major step in implementing CETA, which was signed by the parties in October 2016.
The agreement has been characterised by the federal government as “by far one of Canada’s most ambitious trade initiatives”, and covers a wide range of areas, including import and export tariffs, labour and environment, food and drugs, and intellectual property.
From a trademark perspective, September 21 will see the implementation of:
- an expanded list of protected geographical indications;
- new mechanisms integrated into the Trademarks Act for protecting geographical indications; and
- new provisions relating to oppositions, cancellation and exceptions in respect of geographical indications.
The list of protected geographical indications will be expanded by the registrar of trademarks to include indications listed in CETA as well as in the Canada-Korea Economic Growth and Prosperity Act. This will help Canada to comply with the geographical indication provisions of the Canada-Korea Free Trade Agreement, which came into force on January 1 2015.
Currently, the list of protected geographical indications includes only wines and spirits, but it will be expanded to include agricultural products and food, including cheeses and meats.
Geographical indications protected under CETA or the Canada-Korea Free Trade Agreement will not be subject to the same practices traditionally associated with geographical indications – they will be protected as soon as they are listed, are not subject to the objection procedure for proposed geographical indications and cannot be removed by following the ordinary removal procedure for geographical indications.
The procedure for adding future entries on the list of geographical indications, as well as objection and removal provisions, is clarified.
There is a new definition and test for confusion between geographical indications and trademarks for the purposes of objecting to proposed geographical indications and removing geographical indications from the list – a trademark will be confusing with a geographical indication if the use of both would likely lead to the inference that the goods have the same source. Factors similar to those currently used to determine confusion between trademarks or trade names will apply.
Adoption and use of a protected geographical indication as a trademark or otherwise is prohibited if the goods:
- are not produced under the rules of the territory;
- do not originate from the territory; or
- are in the same category as the protected geographical indication in the case of foods and agricultural products.
However, there are certain exceptions: where the responsible authority consents; in certain types of comparative advertising (though comparative advertising on labels and packaging is not permitted); or where the geographical indication is a person’s name, a customary name or term for the wine, spirit, agricultural product or food in Canada, or the common name of certain agricultural products or food.
There are also certain specific exceptions allowing continued use of the new geographical indications for Asiago, Feta, Fontina, Gorgonzola, Munster, Beaufort, Nurnberger Bratwurste and Jambon de Bayonne.
In line with the expanded protections for geographical indications, the Trademarks Act is amended to prohibit the registration of ordinary trademarks that are in whole or in part for protected geographical indications for food or agricultural products where the goods covered by the mark are in the same or a similar category.
The trademark infringement provisions in the Trademarks Act will contain an exception for certain listed geographical indications (ie, use of a geographical indication that is confusing with a trademark registration will not be considered infringing).
The prohibitions in respect of import and export and the request for assistance border measures programme are extended to protected geographical indications to help combat counterfeits.
Some tricky transition rules will apply for certain CETA geographical indications, including a phase-out period for current uses of geographical indications that will soon become prohibited. For example, the prohibition on use of the indication ‘Beaufort’ will not apply until September 21 2022 to anyone that, themselves or through a predecessor-in-title, began using that geographical indication in connection with an agricultural product or cheese after October 19 2003.
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