After considerable debate and negotiation, the Comprehensive Economic Trade Agreement (“CETA”) between Canada and the European Union came into effect in Canada on September 21, 2017. While there has been public hype surrounding the potential for fancy European cheeses to be available in our Canadian markets, CETA presents far greater consequences than making fine EU indulgences available at your local supermarket.

CETA has wide ranging impacts on trade between Canada and the EU, including concerted efforts to eliminate tariffs over time, regulatory cooperation and harmonization and conformity in product testing and certification standards—all of which are intended to reduce barriers to trade and to facilitate the competitiveness of Canadian products in EU markets (and vice versa!).

Most notably for those that deal with trademarks, CETA has required Canada to make major adjustments to the treatment of geographical indications (“GIs”) in the Trademarks Act (the “Act“) particularly section 11 of that Act. GIs are words associated with certain characteristics, reputations or qualities of goods that are directly attributable to a particular geographic origin. The use of such a word in relation to a product that would mislead an individual as to the true origins of a product, then becomes unlawful. Until CETA came into effect, such protections were only afforded to wines and spirits under Canadian law. Examples of GIs for wines and spirits include Champagne and Bordeaux, both of which indicate wines from particular geographical regions of France.

So, how has the Act changed because of CETA?

GI protections are extended. CETA has extended the application of GIs to food and agricultural products and automatically extends this application to many EU products that currently enjoy such protections under EU law. The amendments to the Act extend protection to cheeses and meats, such as Fontina, Asiago, Feta, Prosciutto di Parma and Jambon de Bayonne.

Approval and use are significantly affected. In order to obtain a new GI, a responsible authority (as defined in the Act) must file a request that includes the relevant information (which differs for wines and spirits and foods and agricultural products) and wait for a review of that request by the Canadian Intellectual Property Office (“CIPO”). Additional information may be requested by CIPO. When a GI is deemed by CIPO to meet all of the necessary criteria, the GI is recommended to the designated federal Minister for publication. Following publication, the GI is subject to a two-month objection period. Successful completion of these steps and absence of a successful objection proceeding will result in entry onto Canada’s GI list.

The use of any approved GI is prohibited unless the product is actually produced in the geographically attributed region in accordance with the appropriate product rules and standards of that region, subject to certain exceptions.[1]  Given that more products may now be subject to GI protection, trademark users must exercise extra caution to ensure that their products are not unlawfully making use of a protected GI.

The rules for existing, though conflicting, names are complex. A number of existing GIs were automatically added to the GI list in Canada through CETA. Additionally, Canada has approved the majority of a list containing approximately one hundred and forty-five EU product names for additional GI protection under the Act. Twenty-one of these product names overlapped with names already in use in Canada.[2]

While similar names may lead to difficulties in determining whether a product is genuine, not allowing continued use of some GIs that have been in use for a significant period of time may be prejudicial to producers of those products. Special solutions have been adopted to create a compromise for a number of names that have been found to be in conflict. The solutions include:

1. permitted coexistence with existing Canadian trademarks[3];
2. allowing for the use of English and French translations[4];
3. allowing GIs that have been used for a specified time-period before October 18, 2013 to continue to be used, with those outside of that time period being phased out[5]; and
4. permitting the use of a qualified term such as “style”, “imitation”, “type”, or “kind” in conjunction with grandfathered GIs (being Asiago, Gorgonzola, Feta, Fontina and Munster) to create greater opportunity for new entrants to the market (e.g. “Asiago-style”).

If a producer seeks to use a product name that is one of the twenty-one conflicting names, they must be aware of the solutions and/or additional requirements that have been implemented in relation to that name.

This can be exceptionally confusing for producers and can create additional risk when it comes to using certain names. While it appears that certain EU products will enjoy dominance in the Canadian market, the permitted use of additional indications such as “style” attempts to ensure that there is still sufficient market access for Canadian products.

New import and export requirements (s.51.03 of the Act). CETA has resulted in stronger border measures to protect against counterfeit GI goods. Increased GI protections mean that it has become unlawful for more products to be imported into (or exported from) Canada in instances where the labels or packaging of a product bears a protected geographical indication, but the products do not originate from the indicated region or weren’t produced in accordance with the law applicable to that region. This, of course, is subject to exceptions. Import or export is permitted if the sale or distribution of the protected product does not contravene GI prohibitions under the Act (for example, the product is subject to exceptions or the grandfathering provisions), where the product is imported or exported by an individual for personal use, or where the product is being shipped from one place to another via Canada and is temporarily in customs transit with the Canada Border Services Agency (“CBSA”) in Canada.

CBSA officers may detain products which are suspected to be in contravention of the GI provisions. Goods detained may be detained for ten days, and up to an additional ten days at the request of a rights holder. Owners of GIs are now able to file a Request for Assistance with the CBSA. Further, CBSA Officers may provide samples of detained goods or other information, (such as the name and address of the owner, importer, exporter or consignee, quantity of goods, country of origin and date of importation) to owners of GIs which could assist in pursuing remedies under the Act.

Greater protection for Canadian brands. Extended GI protections resulting from the coming into force of CETA can pose daunting administrative challenges for producers. It may appear that there are considerable protections afforded to EU products, but CETA is a two-way street. This means that Canadian producers who have geographically distinct products may have greater protections and potentially greater revenue streams, because of their unique products.

Producers should look carefully at whether or not they may be affected by the new extended GI protections. If unsure, it is always helpful to consult with a knowledgable professional to ensure that products are not running afoul of the amendments to the Act.

[1] Exceptions include obtaining consent from the GI owner to use it, use of a person’s name, comparative advertising that does not appear on labels or packages, and use of customary or common names.

[2] These twenty-one names are Canards à foie gras du Sud-Ouest (Périgord), Szegedi téliszalámi/Szegedi szalámi, Prosciutto di Parma, Prosciutto di S. Daniele, Prosciutto Toscano, Black Forest Ham/Jambon Forêt noire, Tiroler Bacon, Parmesan, Bavarian Beer/Bière Bavaroise, Munich Beer/Bière Munich, St. George Cheese/Fromage St-George[s], Valencia Orange, Comté/County in association with food products when used to refer to Canadian names of counties (for example, Prince Edward County), Beaufort Cheese, Nürnberger Bratwürste, Jambon de Bayonne, Asiago, Gorgonzola, Feta, Fontina, and Munster.

[3] Names of EU products that have been found to be in conflict with existing Canadian products are permitted to co-exist in the market without running the risk of infringement. Instead of allowing the product that was created first in time to have the right to GI protection, the use of names for both EU and Canadian products is permitted. These products are Canards à foie gras du Sud-Ouest (Périgord), Szegedi téliszalámi/Szegedi szalámi, Prosciutto di Parma, Prosciutto di S. Daniele, and Prosciutto Toscano.

[4] The use of both English and French translations of certain protected GIs is permitted as long as the use does not mislead the consumer about the origin of the product. For example, the English translation may be included on the GI list, but that term may also be referred to in French. These names include Black Forest Ham/Jambon Forêt noire, Tiroler Bacon, Parmesan, Bavarian Beer/Bière Bavaroise, Munich Beer/Bière Munich, St. George Cheese/Fromage St-George[s], Valencia Orange, Comté/County in association with food products when used to refer to Canadian names of counties.

[5] All producers who used a particular name for a specified time period before the applicable cut-off date, are permitted to continue to use the GI. Those producers who do not meet this criteria will phase out their products within an agreed number of years. This is based on a principle of fairness, giving those producers who have long-standing use of the name priority, because it would be more challenging to shift production.