September 21, 2017 has been set by the Government of Canada as the date on which the majority of the Act implementing the Comprehensive Economic and Trade Agreement between Canada and the European Union (known as “CETA”) 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 characterized 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 as well as intellectual property.
From a trademark perspective, September 21 will see the implementation of an expanded list of protected geographical indications (known as GI’s), new mechanisms integrated into the Trade-marks Act for protecting GI’s, as well as new provisions relating to oppositions, cancellation, and exceptions, in respect of GI’s.
1. The list of protected GI’s will be expanded by the Register of Trademarks to include indications listed in CETA as well as in the Canada-Korea Economic Growth and Prosperity Act (which will help Canada comply with the GI provisions of the Canada-Korea Free Trade Agreement, which came into force January 1, 2015.
2. Currently, the list of protected GI’s includes only wines and spirits, but will be expanded to include agricultural products and food, including cheeses and meats. A list of the GI’s protected under CETA is available here.
3. GI’s protected under CETA or the Canada-Korea Free Trade Agreement will not be subject to the same practices traditionally associated with GI’s — they will be protected as soon as they are listed, are not subject to the objection procedure for proposed GI’s, and cannot be removed by following the ordinary removal procedure for GI’s.
4. The procedure for entry of future GI”s on the list of geographical indications, as well as objection and removal provisions are clarified.
5. There is a new definition and test for “confusions” between GI’s and trademarks for the purposes of objecting to proposed GI’s and removing GI’s from the list — a trademark will be confusing with a GI if use of both would likely lead to the inference that the goods came from the same source. Factors similar to those now used to determine confusion between trademarks and/or trade names will apply.
6. Adoption and use of a protected GI 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 (in the case of foods and agricultural products) are in the same category as the protected GI. However, there are certain exceptions: where the responsible authority consents; in certain types of comparative advertising (however comparative advertising on labels and packaging is not permitted); or where the GI 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.
7. There are also certain specific exceptions allowing continued use of the new GI’s for “Asiago”, “Feta”, “Fontina”, “Gorgonzola”, “Munster”, “Beaufort”, Nurnberger Bratwurste” and “Jambon de Bayonne”.
8. In line with the expanded protections for GI’s, the Trade-marks Act is amended to prohibit the registration of ordinary trademarks that are in whole or in part for protected GI’s for food or agricultural products where the goods covered by the mark are in the same or a similar category.
9. The trademark infringement provisions in the Trade-marks Act will contain an exception for certain listed GI’s (i.e. use of a GI that is confusing with a trademark registration will not be considered “infringing”)
10. The prohibitions in respect of import/export and the Request for Assistance border measures program are extended to protected GI’s to help combat counterfeits.
There are some tricky transition rules for certain CETA GI’s, including a phase-out period for current uses for GI’s that will soon become prohibited (Just by way of example, the prohibition on use of the indication “Beaufort” will not apply until September 21, 2022 to any person who, themselves or through a predecessor-in-title, began using that GI in connection with an agricultural product or cheese after October 19, 2003).