Canada Expands Scope of Protection under Geographical Indications
Chances are that you’ve interacted with Geographical Indications without your knowledge. You get a promotion at work (yay!), and you decide to buy a bottle of Champagne to celebrate. Your celebratory splurge to buy authentic Champagne guarantees that the bubbles you’re consuming come from the Champagne region and have been produced according to a strict guideline. The Champagne classification is protected as a Geographical Indication.
As a result of the Comprehensive Economic and Trade Agreement (“CETA”) between the European Union and Canada, Canadian consumers will now be able to confidently state that the Roquefort cheese they are pairing with their Champagne also originates from the south of France, because the products protected in Canada as geographical indications has expanded.
A Geographical Indication (GI) identifies the geographic origin of a product if that product’s reputation, quality or other characteristic is attributable to its geographic origin. In Canada, before the implementation of CETA on September 21, 2017, protected GIs were limited to wines and spirits, such as Champagne and Scotch Whiskey.
Effect of CETA on Geographical Indications in Canada
CETA’s implementation expanded protected GIs in Canada to include over 170 “agricultural product and food”. Certain well known new GIs include Brie de Meaux (a soft cheese from the Brie region of France), Aceto balsamico di Modena (a balsamic vinegar from Italy) and Prosciutto di Parma (a dry-cured meat from Italy).
Products not automatically protected by virtue of CETA’s amendment to the Trademark Act, may still be protected if a request is made with the Registrar of Trademarks to have that product added to the protected GI list.
Impact on Canadian Brand Owners
What these changes mean is that it is now prohibited to use a protected GI (as a trademark or in any manner) if the product:
(i) is part of the same category of products as the GI, (ii) is not produced according to the geographical territory’s rules, or (iii) does not originate from that geographical territory.
Canadian producers, manufacturers and sellers can breathe a very small sigh of relief knowing that there are certain exceptions to the rule against using a protected GI:
in specific forms of comparative advertising;
where the “responsible authority” consents;
where the GI is an individual’s name, a customary name for the product in Canada, or the French or English common name of certain products; and
continued use of specific GIs, including “Feta”, “Gorgonzola”, and “Nurnberger Bratwurste”.
However, exceptions are never straightforward and advice should be sought before using a GI.