On May 16, 2017, Bill C-30, Canada’s legislation to implement the Comprehensive Economic and Trade Agreement (CETA), a free trade agreement between Canada and the European Union, received royal assent. The bill includes significant amendments to Canada’s Trade-marks Act with respect to geographic indications (“GIs”), which brand owners and users should be aware of, especially those businesses in the agricultural products and food industries. An implementation date has not yet been confirmed and the provisions will come into force on a day to be fixed by order of the Governor in Council.
Here is a brief summary of the key amendments from the trademark perspective:
a) Expansion of definition of geographical indications
The most significant change is an expansion of the definition of geographical indications (“GIs”). GIs are used to identify products that have a specific geographical origin and that have a quality, reputation or other characteristic attributable to that geographical origin.
Currently, protection for a GI under the Trade-marks Act is limited to wines and spirits. Examples of GIs that are accorded rights under the Act as a result of being listed as protected GIs include “Scotch Whisky”, “Champagne” and “Bordeaux”. Bill C-30 expands the definition of GIs to include certain categories of “agricultural product or food”, such as dry-cured meats, cheeses, pasta, beer, cereals and vinegar.
b) Expansion of prohibited uses
Under the current Act, once listed, no person may use protected GIs in association with wines and spirits that do not originate in the specified territory identified on the list. In addition to such prohibition, those in the industries should be aware that the new amendments also prohibit the use of indications on wine, spirits, agricultural products or food that are not produced or manufactured in accordance with the law applicable to that territory.
c) Confusion analysis of geographical indications identifying agricultural product or food
The amendments include new provisions for analysing whether an indication for an agricultural product or food is confusing with a trademark. In conducting the analysis, regard shall be had to all the surrounding circumstances, including the length of time that the indication has been used and the extent to which it has been known, the degree of resemblance between the indication and the trademark, the trademark’s inherent distinctiveness, the length of time it has been in use, and the nature of the goods, services or business that is associated with the trademark.
d) Removal of an indication from the list
The amendments grant the Federal Court exclusive jurisdiction to order the Registrar of Trade-marks to remove an indication or a translation from the list of GIs on the application of any interested person. The new provisions set out the grounds for such removal, as well as some procedural guidance on seeking an order, and the effect of the Court’s order for removal.
e) Time limits for filing a statement of objection and counter statement
Currently, any person interested may object to the listing of a GI by filing a statement of objection within three months after the publication of the GI. Under the new amendments, the time limit for doing so will be reduced to two months. Similarly, the time limit for the responsible authority to file a counter statement will be reduced from three months after service of the statement of objection to two months. It will therefore be important for those in the food and agricultural products industry to review publications of GIs.
f) Additional grounds for objection
Currently, the only available ground of objection to a GI is that “the indication is not a geographical indication”. The new amendments under CETA add the following additional grounds of objection:
- the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;
- the indication is not protected by the law applicable to the originating territory of the wine or spirit or the agricultural product or food (except those originating in Canada); and
- if the indication is for identifying an agricultural product or food, it is confusing with an existing trademark that is registered, used in Canada, or for which an application has been filed.
g) Expanded categories of exceptions from prohibited adoption of indications
The current exceptions in relation to the use of personal names and use of an indication in comparative advertising will continue to apply, as well as the exception of continued or similar use of an indication in association with a wine or spirit. The amendments add various exceptions in relation to the use of indications of several specific categories of cheeses and meats, such as Feta and Jambon de Bayonne.
h) Customs enforcement extended to geographical indications
The Canada Border Services Agency Request for Assistance (RFA) program offers assistance to rights holders in detaining commercial shipments with suspected counterfeit or pirated goods. The new amendments will extend its coverage of goods bearing “relevant registered trade-mark” to “relevant protected mark”, which includes protected GIs on the product, labels, or packaging of a relevant wine or spirit, or agricultural product or food.
Food and agricultural producers and businesses in both Canada and overseas will be impacted by the changes set out in CETA. While the expansion of GIs to a wide range of food and agricultural products is good news for European businesses intending to expand into Canada, there are still strategies available to Canadian businesses to ensure that they continue to compete fairly in the marketplace. The full text of Bill C-30 can be found here.
By Angela Pei Heng Li, Thomas Kurys and Sangeetha Punniyamoorthy, DLA Piper
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