Canada: What You Need To Know About Geographical Indications In Canada

A geographical indication (GI) is a type of intellectual property defined in the Trade-marks Act. GI refers to a name, sign or other indication used to identify a wine, spirit, agricultural product or food as originating in a country, territory, region, or locality that is of a quality, reputation or other characteristic attributable to that geographical origin.

From a consumer's perspective, GIs function to indicate to the consumer that the products are made from a particular region or that the products contain characteristics unique to those manufactured from a particular region. Many GIs have important economic and cultural value to the territories they represent. By way of example, Napa Valley, Okanagan Valley, Champagne, Port, and Asiago are protected GIs in Canada.

What can be protected using GIs in Canada?

In the past, Canadian law only attributed GI protection to wines and spirits. However, as of September 21, 2017 and as a result of the EU-Canada Comprehensive Economic Trade Agreement (CETA), Canadian law now offers protection for 24 more categories of agricultural products and food:

1. Fresh, frozen and processed meats

9. Cereals

17. Sugars and syrups

2. Dry-cured meats

10. Products of the milling industry

18. Pasta

3. Fresh, frozen, processed fish products

11. Oilseeds

19. Table and processed olives

4. Butter

12. Hops

20. Mustard paste

5. Cheeses

13. Ginseng

21. Beer

6. Fresh and processed vegetable products

14. Beverages from plant extracts

22. Vinegar

7. Fresh and processed fruits and nuts

15. Oils and animal fats

23. Essential Oils

8. Spices

16. Confectionery and baked products

24. Natural gums and resins — chewing gum

 

The Canadian Intellectual Property Office (CIPO) maintains a list of protected GIs that can be accessed at its website.

What Does GI Protection Mean?

Like other forms of intellectual property, such as trademarks and copyright, GI protection offers the owner with certain rights. A GI provides the right to prevent another person or business from "using" the GI in Canada on products that do not originate from the relevant territory referenced by the GI. "Use" of a GI includes activities such as sale and advertising of the goods in Canada, importation of goods into Canada, and exportation of goods from Canada to other countries. This right, however, is limited to products and goods classified under the same category. There are also a number of exceptions which may allow another party to use a GI. Some of the exceptions are listed below:

  1. The GI owner provided consent.
  2. The GI is a person's name or the name of a predecessor in title.
  3. The GI is used in comparative advertising.
  4. The GI is no longer protected by the law of the territory or has fallen into disuse.
  5. The GI is a term customary in common language in Canada.

Please note that not all the possible exceptions have been listed in this article. Several other exceptions for specific GIs or categories of goods also exist. If you have any doubts, it is best to consult with a lawyer or a trademark professional to assess the specific circumstances.

Given that there are all these exceptions, it can be challenging to fully canvass how GIs are protected in Canada. Figure 1 sets out a number of hypothetical examples:

Figure 1:

Protected GI

Use by Second Party

Is Use by Second Party allowed?

"ABC" for cheese from Spain

Use of "ABC" on cheese packaging; product is made in Canada

No

"CDE" for olive oil from Italy

Use of "CDE" on dry-cured meat; product is made in Canada

Yes
(different product categories)

"XYZ" for dry-cure meat from France

Use of "XYZ" for dry-cured meat; product is made in Canada; owner's name is "Jason XYZ"

Yes
(exception based on person's name)

"Asiago" for cheese from Italy

Use of "Asiago Style Cheese" for cheese; product is made in Canada

Yes
(exception specific to Asiago applies — addition of "style" is permitted)

"Petite Cantal" for cheese from France

Use of "Petite Cantal like cheese" for cheese; product is made is Canada

No
(addition of "like" is insufficient. This exception only applies to certain cheeses but not Petite Canal.)

"Parmigiano Reggiano" for cheese from Italy

Use of "Parmesan" for cheese; product is from Canada

Yes
(Use of "parmesan" is permitted based on an exception)

 

The protection afforded by GIs becomes more complex when considering translations of otherwise protected GIs. Use of the translation of a GI for wines, spirits or GI's protected through CETA would continue to be protected. However, use of translations of GIs protected through applications in Canada would only be protected if the translation is also listed as a protected GI. We recommend discussing with a professional for this type of inquiries.

How can you Obtain and Enforce GI Protection in Canada?

In order to apply for GI protection in Canada, a responsible party must submit a request to have the GI listed. This "responsible party" is an entity (person or business) that is by reason of state or commercial interest, sufficiently connected with and knowledgeable of the category of the product. Each request must be accompanied by a fee of $450. CIPO offers a detailed guide on how to apply for GIs. Assuming all requirements are met at filing, based on data in 2018, it will take approximately five to eight months to enter a new GI on the list of protected GIs in Canada.

Once a GI enters the list, it is then possible to enforce the protected GI from third-party use through a number of avenues discussed below. A Canadian lawyer or a trademark agent should be consulted for assistance in obtaining and enforcing GI protection.

1. Under the Trade-marks Act through the CBSA Request for Assistance Program

Under the Request for Assistance Program (RFA), intellectual property rights holders can file a written request to temporarily detain suspected counterfeit and pirated goods entered at the border. These applications remain valid for two years (can renew every two years at the applicant's request). As a result of CETA, GI right holders are able to make use of this program to enforce protection of their GIs. Information on how to apply for the RFA Program can be found on the CBSA's website.

2. Through Court Proceedings

In order to enforce the GI, an owner may initiate a court proceeding in Canada against a third party's unauthorized use. Litigation however is expensive and complex and a GI owner should consider legal counsel before embarking on this method of GI protection.

3. Under the Food and Drugs Act

The Food and Drugs Act contains provisions prohibiting misleading labelling. A GI owner may enforce a GI by filing a complaint with the Canadian Food Inspection Agency (CFIA). The CFIA enforces the food safety and labelling rules outlined in the Food and Drugs Act. In order to file a complaint, a GI owner may use an online form provided by CFIA to report a food safety or labelling concern. The CFIA may then conduct an investigation and take administrative action.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

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