Teresa Scassa - Blog

Wednesday, 30 October 2013 14:26

Geographical indication protection in CETA

Written by  Teresa Scassa
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The new Canada-Europe Trade Agreement (CETA) is poised to expand the protection available to European geographical indications in Canada. Currently, under the Trade-marks Act, protection is available only to a limited number of geographical indications used in relation to various wines and spirits. CETA will expand not only the number of protected geographical indications; it will also enlarge the categories of protected indications to cover a broad range of agricultural products such as cheese, meat, olives, and vinegars.

A geographical indication (GI) is, in essence, a word or combination of words that indicates the geographical point of origin of a particular product in circumstances where that geographical origin gives the product distinct qualities or characteristics. These characteristics may be due to features that are particular to that region (a certain soil type or climate, for example) in combination with social factors (a particular tradition of production developed through a long history). Europe, of course, with its many long-standing local traditions and customs relating to food and wine, is the source of many classic and sought after products that North American producers have been happy to imitate and to sell using the same name to identify the type of product.

Because the text of CETA has not been made public, it is possible only to rely upon the short snippets of information that have been provided to the public regarding the scope of this agreement. It is not clear, therefore, whether the provisions regarding geographical indications will have a prospective effect only (permitting existing producers of products labelled as, for example, FETA or ASIAGO, to continue with their usage of these terms), or whether it will apply to all producers. It may be that it will not apply to those who have acquired actual trademark rights in a particular word or combination of words, but that it will apply to those who have merely used the geographic descriptors in labelling their products. Some reports indicate that descriptors will still be permitted with modifiers. Thus, instead of referring to one’s product as ‘Feta cheese’, it might be necessary to refer to it as Feta-type cheese, or Feta-style. While the details will obviously determine the full impact of CETA, it is without doubt that this agreement will affect Canadian producers, who have already expressed concerns over how the increased protection of geographical indications will impact the marketing of their products.

Relative to Europe, Canada is largely new to the development of long-standing traditions of regional agricultural production of distinctive products. Where this has occurred, the geographical designations for these products may be protected using certification marks. Certification marks are trademarks that can be applied to categories of products or services that are distinctive by virtue of the character or quality of the product, the methods of production, the production by a certain category of people, or by geographic place of origin. The owner of a certification mark is not a producer, but is rather an organization that is responsible for licensing the use of the mark by those who meet the criteria established as part of the registration of the mark. Canada’s First Nations, which have many distinctive traditions that are tied to territory, not simply around food but also around textiles and artisanal works, have begun to explore the use of certification marks to identify the authenticity of their products in the face of multiple imitators (consider the registered certification mark for COWICHAN in relation to clothing). Nevertheless, while certification marks offer some protection, they are different from GIs in important ways. In the first place, once protected, a GI becomes a prohibited mark: a GI, or a mark closely resembling it, cannot be adopted, used or registered as a trademark by anyone not entitled to its use. Further, this protection is at the state level: the registrar of trademarks maintains a list of protected GIs, and these GIs are extended comparable protection in other countries through the vehicle of trade agreements. By contrast, an organization that applies for a certification mark must comply with the rules regarding the registration and maintenance of trademark rights. The protection of the mark is generally only against the adoption by another of a mark that would cause confusion with the certification mark. Finally, a certification mark will only be protected in those countries in which the organization has itself sought to register the mark; in attempting to do so, the organization may run up against pre-existing confusingly similar marks in another country, and may find itself without the protection it seeks. It is clear that the potential for the use of protected geographical indications on behalf of Canadian producers remains underdeveloped in Canada. The expanded protection of geographical indications in CETA is, by all accounts, a one-way street.

The CETA will include a list of protected geographical indications as negotiated by the parties. This list is expected to include GIs such as Grana Padano, Roquefort, Feta, Asiago, and Prosciutto di Parma (and many more). It is reported that there will also be a mechanism that will permit other GIs to be added to the list on an ongoing basis.

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