Ashlee Froese is an Osgoode Hall alumnus and currently practices intellectual property at the law firm of Keyser Mason Ball LLP.
What are Geographical Indications in Canada?
Geographical Indications (“GIs”) are protected indicia that specifically relate to wines and spirits under the Canadian Trade-marks Act (“the Act”). A GI identifies the “quality, reputation or other characteristic of the wine or spirit [that] is essentially attributable to its geographical origin”.1
Once GI protection is obtained, any person is prohibited from using, in any language, the GI as a trade-mark, or otherwise, in connection with a wine or spirit, if it does not originate from the protected territory associated with the GI.
The Act creates an exception for specifically identified generic wine names, which allows them to be used as a trade-mark or in connection with a wine business. Use of these generic wine names cannot be restricted as GIs.
What are the statutory changes?
Amendments to the Act have narrowed the list of generic wine names. Effective as of December 31, 2008, ‘Burgundy’, ‘Bourgogne’, ‘Rhine’, ‘Rhin’, ‘Sauterne’ and ‘Sauternes’ are no longer protected as generic wine names.
This is part of a multi-stage process to bring Canada’s legislation into compliance with The Agreement between Canada and the European Community on Trade in Wines and Spirit Drinks (“the Agreement”) entered into on September 16, 2003. In the final stage of implementation of the Agreement, ‘Chablis’, ‘Champagne’, ‘Port’, ‘Porto’, and ‘Sherry’ will be removed from the list of generic wine names on December 31, 2013.
What does this mean?
It is anticipated that the amendments to the list of generic wine names is a precursor to allow European wine producers to apply for protection of wines as GIs in Canada. This trend has already been established. For example, on the date of entry into force of the Agreement, ‘Bordeaux’, ‘Chianti’, ‘Claret’, ‘Madeira’, ‘Malaga’, ‘Marsala’, ‘Medoc’, Médoc’, ‘Mosel’ and ‘Moselle’ were removed as generic wine names. As of April 27, 2009, more than half of these wine names are now protected GIs.
As a result, only wines that come from the specific region in which the GI is produced will be able to use that specific wine name. If the GI list expands, this will impact trade-mark, marketing and labeling strategies of wines sold in Canada that do not come from the protected GI region.
How do you obtain a GI in Canada?
A “responsible authority” submits an application to the Canadian Trade-marks Office, which is subsequently examined by Agriculture and Agri-Food Canada. The application must set out, amongst other things:
“the quality, reputation or other characteristic of the wine or spirit that in the opinion of the Minister qualifies that indication as a Geographical Indication.”2
Upon approval, the application is subsequently published in the Canada Gazette, which provides third parties with the opportunity to object to the wine name becoming a GI. The only basis of objection is that “the indication is not a Geographical Indication.”3
What can you do?
There are two roles a party can play: applicant or objector. If you satisfy the requirement of a “responsible authority”, namely that you are “by reason of state or commercial interest, sufficiently connected with and knowledgable with the wine”4, you can file an application for GI protection for a previously generic wine name. If, however, you do not qualify as a “responsible authority” but have a vested interest in having the wine name not protected as a GI, you can attempt to block the wine name from becoming a GI through the objection process.
1Trade-marks Act, R.S.C. 1985, c. T-13, Section 2
2 Ibid, Section 11.12(3)(e)
3 Ibid, Section 11.13(2)
4 Ibid, Section 11.11
Thanks for this interesting post, Ashlee. Its yet another example of how the standard rules for determining generic status under trade mark law have been tweaked for GIs. If the guiding principle is to measure consumer and trade usage of the term in TM law, the longstanding tactic for GIs in international negotiations (can be traced back to the Treaty of Versailles and well before that) has been to attempt to either freeze or retrieve a meaning by legislative fiat. It doesn’t matter what the market thinks, the treaty reclaims the term for the originators. Antony Taubman has written about the contractual bargaining between countries and ‘exchange of lists’ logic: A Taubman ‘Thinking Locally, Acting Globally: How Trade Negotiations over Geographical Indications Improvise Fair Trade Rules’  Intellectual Property Quarterly 231.
While this seems like a deviation from a more principled determination of generic status, a genericide determination under trade mark law is usually pretty harsh on the original GI producers. This is illustrated by Canadian and US determinations on whether Prosciutto di Parma retained geographical significance or had become generic.
For those interested, I’ve analysed these cases in ‘Quibbling Siblings’ http://ssrn.com/abstract=1000467
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