On October 30, 2016, Canada and the European Union officially signed the Comprehensive Economic and Trade Agreement (CETA). Bill C-30, the CETA Implementation Act, was tabled on October 31, 2016.
In addition to reducing tariffs and others barriers to trade between Canada and the EU, CETA also seeks to harmonize certain aspects of the signatory's intellectual property laws, ostensibly in order to encourage trade. With respect to trademarks, CETA requires "all reasonable efforts" to promote accession by member states to the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and the Singapore Treaty on the Law of Trademarks. The 2014 amendments to the Trade-marks Act are part of Canada's efforts towards accession to the Madrid Protocol and Singapore Treaty.
Brand owners should be aware of CETA's other significant impacts on Canadian trademark law, particularly the changes relating to the protection of geographic indicators. Geographic indicators, or GI's, are words that connote the origin of the goods, and are viewed by countries and businesses in those countries as words that are so integrally connected to the goods that use of those words on goods that do not originate from those countries would be misleading. Currently, the Canadian Trade-marks Act only affords protection for GI's relating to a limited list of wine and spirits.
Here are the seven changes to the GI protection that will likely have the most impact on trademark holders in Canada:
1. Protection for GI's will now extend to agricultural products and food.
Canadian GI protection will expand significantly to agricultural products and foods, including to certain cheeses, meats, baked goods, oils, spices, nuts, cereals and animal fats.
The Registrar of Trademarks has the onus of maintaining a list of all GI's. Entry on the Register will take place once a Minister's statement of the intended GI and a translation has been published on the Canadian Intellectual Property Office (CIPO) website and no objection has been filed within two months, or any filed objection has been withdrawn or rejected. The Bill includes a list of details to be included in the Minister's statement, including, for non-Canadian wines, spirits, products or foods, that the indication is protected by the law of the applicable originating territory. Removal from the list occurs on a request of the Minister, or by Federal Court order.
2. A new definition of "confusion" related to GI's compared to trademarks has been added.
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 other marks and trade names will apply.
3. New "prohibited uses" will apply.
It will become unlawful to use a words, as a trademark or otherwise, that is a protected GI, if the goods are either no produced under the rules of the territory, or if they do not originate from the territory. Similarly, use of a protected GI on foods or agricultural products that are in the same category as the protected GI will become unlawful. These prohibitions will impact not only use, but also registration. Amendments to section 12 of the Trade-marks Act will provide that trademarks that consist of protected GI's identifying wines, spirits, agricultural products or foods that do not originate in the applicable territory will be unregistable.
4. Bill C-30 contains exceptions to preserve Canadian trademark rights and limit the impact on current users.
Several exceptions are permitted, including use of a person's name, except if misleading, or use in comparative advertising, except on labels and packaging. Exceptions for comparative advertising ar ein line with Canadian case law on depreciation of goodwill under section 22 of the Trade-marks Act, which has effectively curtailed actions for deprecation of goodwill to instances where a competitor's mark is displayed on a product or it's packaging, or at the point of sale.
Wine or spirit names in continuous use by a Canadian (person or entity doing business in Canada) prior to April 1994, will be permitted. Certain cheeses such as Feta, Asiago and Munster and meats including "Jambon de Bayonne" will be excepted, if those words were used for 10 years prior to October 2013. Similarly, use of "Feta-type" or "Fontina-style" will be permitted, if the place of origin is clearly noted.
The prohibitions will not apply to words that are protected GI's but which are also customary common names, or to grape or plant varieties or animal breeds, previously used in Canada, or to trademarks used or filed before the publication of any GI.
In addition, Canadians will maintain the ability to use common English and French names for certain agricultural products or foods, such as "Valencia Orange", "Black Forest Ham", "Parmesan", "Tiroler Bacon" and "St George Cheese".
5. New grounds for objection will be introduced and deadlines will be shortened.
Objections to GI's will need to be filed within two months of publication of the Minister's statement of intent to list a new GI (shortened from the current deadline of three months). The Bill also confirms that the procedure applies to both proposed GI's and translations, and identifies the grounds for objection, including that the mark is not a GI; is identical to a common name for the goods; and for agricultural products and food, and the indication is confusing wit ha trademark that is registered, previously used, or already the subject of an application. The Registrar is given its own discretion to reject any objection as frivolous, or at the request of the authority responsible for the GI, to strike all or part of the objection. Otherwise, the responsbile authority must file a counter statement within two months. Parties may file deviance and make representations.
6. Any interested person may bring an application to remove a GI from the protected list.
The Bill provides a mechanism by which any interested party may make an application to the Federal Court to have a GI removed from the protected list of indicators. Grounds for removal are that the indicator is either not a GI; is identical to a customary term for a wine, spirit, agricultural product or food; is not protected by the law applicable to the territory in which the product is identified as originating; or the indicator is confusing with a registered trademark, or a previously used mark that has not been abandoned. Interested parties cannot, however, apply for the removal of the protected EU GI's listed in Part A of Annex 20-A of CETA, or for the protected Korean GI's also enumerated in the Bill. Well known examples of GI's that cannot be removed include the European indicators "Prosciutto di Parma", "Parmigiano Reggiano", "Brie de Meaux", "aceto balsamico di Modena" and "Mortadella Bologna", and Korean indicators such as "Koran Red Ginseng" and "Icheon Rice".
7. Request for Assistance procedures will be available for "protected GI's".
The Trade-marks Act's current customs request for assistance procedures will become available for "protected marks", defined as registered trademarks and protected GI's. Further, it will become unlawful to import or export wines, spirits, agricultural products or foods if a protected GI is displayed on the goods, their labels, or their packaging, and the goods either do not originate from the territory indicated or were not produced in accordance with the laws of the territory. Exceptions will exist, however, for the import or export of goods by an individual for personal use, and for instances where goods pass through Canada in the course of transit between two locations outside of Canada.
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).
May 30, 2017
Anti-dumping duty and countervailing duty are now being assessed on certain Fabricated Industrial Steel Components (FISC). On Thursday May 25, 2017 the Canadian International Trade Tribunal (CITT) issued a finding of injury respecting FISC originating in, or exported from China, Korea, and Spain.
This finding follows a Notice of Final Determination of Dumping and/or subsidizing of certain FISC issued by Canada Border Services Agency (CBSA) on April 25, 2017.
Certain exporters listed in the CBSA Final determination have been provided with normal values.
The subject goods are described fabricated structural steel and plate-work components of buildings, process equipment, process enclosures, access structures, process structures, and structures for conveyancing and material handling, including steel beams, columns, braces, frames, railings, stairs, trusses, conveyor belt frame structures and galleries, bents, bins, chutes, hoppers, ductwork, process tanks, pipe racks and apron feeders, whether assembled or partially assembled into modules, or unassembled, for use in structures for:
1. Oil and gas extraction, conveyance and processing;
2. Mining extraction, conveyance, storage, and processing;
3. Industrial power generation facilities;
4. Petrochemical plants;
5. Cement plants;
6. Fertilizer plants; and
7. Industrial metal smelters;
Goods excluded from the determination are electrical transmission towers; rolled steel products not further worked; steel beams not further worked; oil pump jacks; solar, wind and tidal power generation structures; power generation facilities with a rated capacity below 100 megawatts; goods classified as “prefabricated buildings” under HS Code 9406.00.90.30; structural steel for use in manufacturing facilities used in applications other than those described above; and products covered by previous Measures in Force including Certain Fasteners, Structural Tubing, Carbon Steel Plate III and VII, and Certain Steel Grating.
The CITT also excluded from its finding, goods imported in 2017 by Andritz Hydro Canada Inc. from Sinohydro for the Muskrat Falls hydro project in Newfoundland and Labrador.
The FISC in question are usually classified under Harmonized System classification numbers: 7216.99.00.10, 7216.99.00.20, 7216.99.00.30, 7216.99.00.91, 7216.99.00.99, 7301.20.00.10, 7301.20.00.20, 7308.40.00.00, 7308.90.00.60, 7308.90.00.96, 7308.90.00.99, 73188.8.131.52, 8421.99.00.90, 8428.31.00.00, 8428.32.00.00, 8428.33.00.00, 8428.39.00.30, 8428.39.00.41, 8428.39.00.49, 8428.39.00.80 and 8428.39.00.90.
Note that these HS codes are provided for convenience of reference only. Refer to the product definition for authoritative details regarding the subject goods.
Additional information including the list of exporters provided with normal values can be found in the Notice of Final Determination on CBSA’s website.
The Finding of Injury issued on May 25, is found on the CITT website.
Please feel free to contact our compliance department, should you have any questions or concerns.
Q) What is CETA?
A) The Comprehensive Economic and Trade Agreement or CETA, is a trade agreement between the EU and Canada.
CETA covers virtually all sectors and aspects of Canada-EU trade in order to eliminate or reduce barriers. CETA addresses everything from tariffs to product standards, investment, professional certification and many other areas of activity.
Q) When will CETA be implemented?
A) Canada and the European Union (EU) have agreed that CETA will provisionally apply starting September 21, 2017. At which time, qualifying goods that are deemed to originate under CETA may be eligible for wide-ranging tariff reductions when imported into Canada or EU countries
Q) Which tariffs will be eliminated or reduced?
A) Upon implementation, the agreement will eliminate virtually all tariffs on originating goods immediately: over ninety-nine percent (99%) of the non-agricultural tariff and over ninety-two percent (92%) of the agricultural tariffs will be zero on day one. The remaining products will be phased out over time; up to seven (7) years for the most sensitive goods.
Any originating goods that are not in the Tariff Schedule listed under Chapter 2 will be duty free immediately upon implementation of CETA. However, certain goods not listed in the Tariff Schedule may be subject to quota.
Q) What determines the effective date for which CETA rates to be claimed?
A) The Canada Border Services Agency (CBSA) has advised that the release date will determine the effective date for which the CETA preferential tariff treatment may be claimed
Regulatory Affairs Canada July 2017 Page 1
Q) What will be the Proof of Origin under CETA?
A) Products originating in the European Union, on importation into Canada, and products originating in Canada, on importation into the European Union, benefit from preferential tariff treatment of this Agreement on the basis of a declaration ("origin declaration").
The origin declaration may be provided on an invoice or any other commercial document that describes the originating product in sufficient detail to enable its identification. An origin declaration shall be valid for 12 months from the date it was completed by the exporter
The origin declaration is found in Annex 2
Text of the Origin Declaration
The origin declaration, the text of which is given below, must be completed in accordance with the footnotes. However, the footnotes do not have to be reproduced.
(Period: from___________ to __________(1)
The exporter of the products covered by this document (customs authorization No ...(2)) declares that, except where otherwise clearly indicated, these products are of ...(3)
preferential origin. …………………………………………………………….............................................(4)
(Place and date) ……………………………………………………………………..............................(5)
(Signature and printed name of the exporter)
(1) When the origin declaration is completed for multiple shipments of identical originating products within the meaning of Article 19.5, indicate the period of time for which the origin declaration will apply. The period of time must not exceed 12 months. All importations of the product must occur within the period indicated. Where a period of time is not applicable, the field can be left blank.
(2) For EU exporters: When the origin declaration is completed by an approved or registered exporter the exporter's customs authorization or registration number must be included. A customs authorization number is required only if the exporter is an approved exporter. When the origin declaration is not completed by an approved or registered exporter, the words in brackets must be omitted or the space left blank. For Canadian exporters: The exporter's Business Number assigned by the Government of Canada must be included. Where the exporter has not been assigned a business number, the field may be left blank.
(3) "Canada/EU" means products qualifying as originating under the rules of origin of the Canada-European Union Comprehensive Economic and Trade Agreement. When the origin declaration relates, in whole or in part, to products originating in Ceuta and Melilla, the exporter must clearly indicate the symbol "CM".
(4) These indications may be omitted if the information is contained on the document itself.
(5) Article 19.3 provides an exception to the requirement of the exporter's signature. Where the exporter is not required to sign, the exemption of signature also implies the exemption of the name of the signatory.
Regulatory Affairs Canada July 2017 Page 2
Q) What does originating mean?
A) The term “originating” means originating in either Party under the rules of origin set out in the Protocol on rules of origin and origin procedures.
The Product-specific rules of origin are found within Annex 5
Q) What are some of the Importer’s obligations under CETA?
A) In order for an importer to claim preferential tariff treatment, it must be in possession exporter’s origin declaration and be able to provide the origin declaration to their customs authority, upon request. An importer is also required to inform its customs authority of an incorrect origin declaration and pay any duties owing.
In cases where the importer did not have an origin declaration at the time of import, the chapter allows for refund of excess duties paid, within a specified time period.
Importers may be requested to provide documentation that demonstrates that the good, while en-route to Canada or the EU, remained under the customs control of any country not party to the Agreement.
Q) What are the time limits to claim a refund of duties under CETA?
A) If a product would have qualified as an originating product when it was imported but the importer did not have an origin declaration at the time of importation. A refund request may be submitted within a period of no more than three years after the date of importation, as a result of the product not having been accorded preferential tariff treatment.
Q) Does CETA contain a direct shipment clause?
A) Article 14 of the Protocol on rules of origin and origin procedures addresses the transportation through a third party country and reads as follows:
1. A product that has undergone production that satisfies the requirements of Article 2 shall be considered originating only if, subsequent to that production, the product:
a) does not undergo further production or any other operation outside the territories of the Parties, other than unloading, reloading, or any other operation necessary to preserve it in good condition or to transport the product to the territory of a Party; and
b) remains under customs control while outside the territories of the Parties.
2. The storage of products and shipments or the splitting of shipments may take place where carried out under the responsibility of the exporter or of a subsequent holder of the products and the products remain under customs control in the country or countries of transit.
Regulatory Affairs Canada July 2017 Page 3
Q) What is the tariff treatment code for CETA?
A) The Customs Tariff will be amended by adding CEUT “Canada-European Union Tariff” and the tariff treatment code for CETA will be code “31”.
Q) What is the Registered Exporter System (REX System)?
A) The Registered Exporter System (the REX system) is the system of self-certification of origin by registered exporters in the European Union.
EU exporters apply to become registered exporters by filling in an application form and by returning it to their competent authorities. The competent authorities register exporters who submit complete and correct application forms.
Once an EU exporter is registered, they will receive a registration number, which must be indicated on the Origin Declaration.
Q) What will happen when Britain leaves the European Union?
A) Currently, Britain is still part of CETA and will be as long as they remain a member of the EU. At this point, we do not know how their status will change when they leave the EU. It is our understanding; the British government will need to strike new free-trade agreements when they formally exit the EU. We do know that Britain cannot negotiate new trade deals while still in the EU, as trade pacts are signed by the EU on behalf of all member states.
Q) What specific countries make up the European Union?
A) The European Union currently consists of 28 Member States: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and United Kingdom.
Regulatory Affairs Canada July 2017 Page 4
FINAL -- March 6, 2017
Near North Customs Brokers of Barrie, ON Acquires Summit Customs Brokers of Richmond, B.C.
-- Expands Portfolio and Geographic Reach --
BARRIE – Ontario – March 7, 2017 -- Near North Customs Brokers (NNCB) announced today that it has acquired Summit Customs Brokers of Richmond, B.C. The purchase enables Near North to access new geographic markets in British Columbia and add complimentary services to its existing portfolio of offerings.
Summit Customs Brokers provides a comprehensive range of services to enable items such as commercial goods, parcels and cars to cross the Canada border with ease. It assists both individuals and importing businesses of all sizes and in all industries including retail, petroleum, and industrial equipment manufacturing. It has extensive knowledge of Canadian customs laws and a long history of Canada Border Services Agency (CBSA) compliance.
"This was a strategic business move for Near North, but it goes beyond acquiring new offerings and greater reach," said Dave Jupp, vice president sales, NNCB. "Of importance to both companies were our shared values of operating with integrity, excelling as a true business partner for our customers, being an employer of choice, and giving back to the community. Summit has long been on our radar due to its excellent reputation and we are delighted to make this deal a reality."
"Summit Customs Brokers was established in 1993 and three generations of our family have helped grow the business to where it is today," said Sharmaine Shultz, president & CEO, Summit Customs Brokers. "Naturally, a great deal of care goes into such a transaction. We had to be certain our customers, employees, reputation, and legacy would transfer to a business that values what we have built and who will take that to the next level. We are delighted to have found such a company in Near North Customs Brokers."
"We are confident that this step will benefit our customers and employees," said Steven Kendall, vice president Summit Customs Brokers. "We have known Near North for a long time now and believe our corporate cultures and our offerings are a solid fit that should spur future growth and success."
Sharmaine Shultz and Steven Kendall will remain in their current roles leading the Summit Group.
Headquartered at Vancouver International Airport, Summit Customs Brokers has additional offices in Penticton, Vernon, Kelowna, the Pacific Highway Border Crossing in Surrey, the Osoyoos Border Crossing, Whitehorse, and Oroville in WA. For more information about Summit Customs Brokers visit www.summitcb.com
About Near North Customs Brokers
Established in 1990, Near North Customs Brokers provides superior customs brokerage, consulting services, and freight forwarding to customers from any point in the world. Based in Barrie, Ontario, Near North Customs Brokers has four additional locations in Canada: Toronto, Sudbury, Sault Ste. Marie and Edmonton, as well as an office in New York, USA. Near North Customs is a proud member of Manitoulin Group of Companies. For more information about Near North Customs Brokers visit www.nearnorthcustoms.com/
Angela Rea PR -- for Near North Customs Brokers
(1) 905 304 9638