Jun 17, 2019
Canadian businesses have lagged behind much of the industrialized nations in their recognition of the value of intellectual property to protect their intangible assets. When we talk about intellectual property, most Canadians are generally familiar with the concepts of protection for patents, trademark and copyright.
Very few Canadians, I would venture, are even aware of what a geographical indication is, let alone what it is designed to protect. However, if I were to mention at a wine tasting that no Canadian company can sell a sparkling wine called “Champagne,” this would be recognized and understood by most Canadians as a move by French champagne houses to protect their turf. It’s more than that for sure, but the form of protection at issue is known as a geographical indication.
Canada’s Trade-marks Act has long recognized the right to protect a geographical indication for wines and spirits, but the new amendments that take effect June 17 will usher in an expanded recognition of geographical indications for food products. These amendments are the result of hard-fought negotiations in the free trade agreement with Europe known as the Comprehensive Economic and Trade Agreement (CETA), whereby the European countries asked Canada to start recognizing geographical indications for many meats and cheeses from Europe. Consequently, these amendments to the geographical indications are often referred to as the “CETA Amendments.”
In fact, the CETA Amendments added a staggering 172 names to the list of prohibited geographical indications, all originating from Europe. These include such well recognized staples as: Feta, Roquefort, Camembert de Normandie, Brie de Meaux, Gorgonzola, Gouda Holland, Proscuitto di Parma, Elia Kalamatas for olives, Aceto balsamico di Modena, to name only a few. The paucity of Canadian entries reflects how poorly our local producers and provincial governments have capitalized on protections for well-known regions as producers of fine spirits and foods, in contrast to what Europe has done to protect a multi-billion dollar industry for its local economies that have successfully developed a reputation as purveyors of excellent wines, cheeses and meats.
The legal prohibition that arises from the recognition of geographical indications will effectively prevent local producers in Canada from using the names of any protected geographical indications to identify food products that do not come from the designated regions in Europe. These new prohibitions, and permitted exceptions, will be observed on grocery store shelves as cheeses are renamed things like “Feta-style goat cheese.”
Exceptions to the new CETA Amendments will allow local producers to still engage in comparative advertising, provided that the geographical indication is not used on the packaging or labels. In addition, there are exceptions for use of “style” references for FETA, ASIAGO and FONTINA for cheeses, for example. There is also a list of common name exceptions. When in doubt, local producers and their counsel should refer to the official List of geographical Indications, on the Canadian Intellectual Property Office website at www.ic.gc.ca.
The CETA Amendments will also be observed when travelling home with wine or food products, since Canada Customs is responsible for enforcing new border security measures designed to prevent importation of foods and wines that run afoul of the newly recognized geographical indications. The new border measures also feature a “Request for Assistance” program of recordal of rights with Canada Customs so that inspectors of packages and shipments can detain goods for identification by rights holders, and allow these to commence legal proceedings, without releasing the goods detained in appropriate cases.
How does one acquire a “geographical indication” in Canada? Actually, it’s not a simple process, because a “responsible authority,” such as a provincial government, needs to submit an application to request to include the geographical indication for Canada on the official list. This process involves recognition at the government level that a particular wine or spirit, or agricultural product or food, has a sufficient connection to a region that it should be designated as a protected geographical indication.
This often takes the form of a bill or legislation that creates the designation and officially recognizes the significance of the region as a source for a particular wine or spirit, or food product. Quebec has been ahead of the curve in Canada, as it has provincially taken legislative steps years ago to protect regional names known for sweet corn, cheese, ice wine and ice cider as geographical indications, long before Canada introduced the CETA Amendments.
The CETA Amendments should nevertheless be seen as an opportunity, for Canada to up its game and start to protect its local regions that have become known as fine purveyors of peaches, sweet corn, maple syrup, among others. The list of geographical indications is not only useful for protecting local producers, it can build consumer interest and tourism, and ultimately, turn into a multi-billion dollar industry, as it has for Europe.
Unfortunately, Canadian businesses have historically had a poor track record for seeking intellectual property protection. Based on the most recent filing statistics from the Canadian Intellectual Property Office, American companies filed 47 per cent of the patent applications, 30 per cent of the trademark applications and 52 per cent of the industrial designs in Canada.
By contrast, Canadian applicants accounted for 12 per cent of patent applications, 43 per cent of trademark applications and 15 per cent of industrial design applications in Canada for the same year (2017).
What we need is for local producers to lobby provincial governments and the federal government to get them to wake up to the potential economic boom that could be created by capitalizing on the advent of the expanded geographical indication protections. Come on Canada, what are we waiting for? Ontario peaches need to be seen in a whole new light.
This article was originally published by The Lawyer’s Daily (www.thelawyersdaily.ca), part of LexisNexis Canada Inc.