October 31, 2016
On October 30, 2016, Canada and the European Union signed the Comprehensive Economic and Trade Agreement (CETA).
While the primary goals of CETA are to amend legislation to help encourage trade between Canada and the EU, as well as to eliminate associated trade tariffs between the two nations, CETA also significantly impacts intellectual property and trademarks law.
Chapter 20 of CETA is where intellectual property is addressed, with Sub-section B specifically discussing trademarks. It begins with expressly stating that Canada must make all reasonable efforts to comply with the Singapore Treaty, as well as accede to the Madrid Protocol (Article 20.13).
Of note are the amendments and changes made to the protection of “geographical indications” (GIs). Article 20.16 of CETA defines geographical indication as an ‘indication which identifies an agricultural product or foodstuff as originating in the territory of a Party (meaning Canada or the EU), or a region or locality in that territory, where a given quality, reputation or other characteristic of the product is essentially attributable to its geographical origin’.
CETA allows Canada and Canadian rights-holders to shield against and prohibit unauthorized third parties from using and registering protected GIs (Article 20.19.1). While Canada’s current trademark laws already prohibit GIs that are misleading to the public, this protection is specific only to particular wines and spirits. CETA drastically expands the number of protected terms related to agricultural products and foodstuffs.
Inter alia, CETA prevents against (Article 20.19.1-4):
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the use of a GI for a product that falls within the product class specified in Annex 20-A if that product does not originate in the place of origin specified;
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a situation where a product does originate in the place of origin specified in Annex 20-A for that GI, but was not produced or manufactured in accordance with the laws and regulations of the other Party that would apply if the product were for consumption in the other Party;
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the use of any means in the designation or presentation of a good that indicates or suggests that the good in question originates in a geographical area other than the true place of origin in a way that misleads the public as to its geographical origin;
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any other use which constitutes an act of unfair competition within its meaning in the Paris Convention for the Protection of Industrial Property (1967); and
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a person from manufacturing, preparing, packaging, labelling, selling or importing, or advertising a food commodity in a manner that is false, misleading or deceptive.
CETA makes it clear that the registration of a trademark that contains or consists of a GI of another Party will be refused or invalidated (with respect to a product that falls under Annex 20-A for that GI) that does not originate in the place of origin specified (Article 20.19.6).
With regard to GIs that could have more than one meaning – referred to in CETA as “homonymous GIs” – each Party must determine the practical conditions under which the homonymous indications will be differentiated from each other. This requires taking into account and guaranteeing the equitable treatment of the producers concerned, while also ensuring that the conclusion reached does not result in customers being mislead (Article 20.20.1).
Article 20.21 outlines various exceptions to the CETA trademark provisions, including:
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the use of the terms “Asiago”, “Fontina”, “Gorgonzola”, “Feta”, and “Munster” (after October 18, 2013), must be accompanied by expressions such as “kind”, “type”, “style”, or “imitation”, combined with an indication of the geographical origin of the product;
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CETA does not prohibit the use of a term if the translation of a GI is identical with or contains within it a term customary in common language as the common name for a product in the Party;
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Nothing is to prevent the use in a Party, with respect to any product, of a customary name of a plant variety or an animal breed, existing in the territory of that Party as of the coming into force date of these provisions.
With these changes set to be implemented by 2017, Canada is also expected to adopt the Nice Classification system in 2018.
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