Agri-Food Trade Policy

Means of Protection of Geographical Indications in Canada

Background

Geographical indications (GIs) are a type of intellectual property, as are patents, trade-marks and copyright. The concept of a GI as a distinct form of intellectual property developed primarily in European countries, and legal provisions for the protection of GIs are currently enshrined in legal regimes of the European Community (EC). These laws are derived largely from the national systems that evolved in individual member states of the EC. In 1994, the World Trade Organization (WTO) Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) established binding international obligations for the protection of GIs. The TRIPS Agreement does not specify how GIs should be protected in individual countries, nor does it require the creation of a distinct regime for their protection: in other words, the means of protection are not spelled out.

Because of our historical development and the nature of our legal system, Canada has not created a distinct form of protection for GIs other than for wines and spirits. This does not mean that GIs are not protected in Canada. In practical terms, GIs are protected in Canada through several means, including our certification mark system under the Trade-marks Act.

Canada's Certification Mark System

Certification marks are a type of trade-mark. Like ordinary trade-marks, certification marks are identifiable by words and/or symbols used in association with goods and services. However, they have a distinct purpose. While ordinary trade-marks distinguish the goods or services of a specific person or organization, certification marks identify goods or services that meet a defined standard. Several characteristics differentiate certification marks from other types of trade-marks:

• Certification marks can be descriptive of the place of origin of products;
• The owner of a certification mark is not permitted to engage in the manufacture, sale, leasing or hiring of goods or the performance of services in association with which the certification mark is used;
• The owner of a certification mark licenses others the use of the mark in association with goods or services that meet a defined standard. In practice, a certification mark is held collectively by a number of producers of goods or service providers which are eligible to use the mark;
• It is the owner's responsibility to define the standards associated with the certification mark.

A certification mark is used to distinguish goods or services that are of a defined standard with respect to, amongst other things, the area within which the goods or services have been produced or services performed. In this respect, certification marks provide a practical means of accommodating GIs in the context of Canada's trade-mark regime. Given their collective nature, certification marks can play a role similar to that of GIs for wines and spirits, as shown in the examples provided at the end of this document.

Certification marks in Canada tend to be administered in a more market-oriented manner than GIs are in the European context. Control over the definition of standards is left in the hands of the owner of the certification mark, with the trust that consumers will reward quality and rigour. In contrast, specifications required for GIs in Europe tend to be more narrowly defined, and can include requirements laid down by the state.

The standard defined for the use of a GI in another jurisdiction can be applied to a certification mark in Canada. Because of the way certification marks are administered in Canada, they provide the added flexibility of allowing owners to narrow or broaden criteria as they see fit for a particular marketplace. Some well-know names of goods produced in the EC and recognized as GIs there, are currently registered as certification marks in Canada: for example, Stilton Cheese, Parmigiano Reggiano, and Mozarella di Bufala Campana. These products have been marketed and sold successfully in the Canadian marketplace for decades.

Canada's obligations under TRIPS

Canada's Trade-marks Act contains general provisions that apply to all marks and which provide the basic protection for GIs set out in TRIPS. The Act contains provisions prohibiting unfair competition and the registration of marks that could mislead or confuse the public. This includes the prohibition of "passing off" and the use of false or misleading descriptions including in regard to geographical origin, the character or quality of a product or its method of production. These legal measures serve to meet the obligations for the protection of geographical indications set out in Article 22 of TRIPS.

The current procedures for application, registration and filing an opposition to a trade-mark (including a certification mark) in Canada are highly transparent and applied in a non-discriminatory fashion to both Canadians and non-Canadians. The Canadian regime is, therefore, compliant with TRIPS national treatment obligations.

In order to meet the additional obligations for GIs for wines and spirits contained in Article 23 of the TRIPS Agreement, Canada has added a definition of GIs in relation to wines and spirits in its Trade-marks Act, as well as provisions for the establishment of a list of protected GIs for products in this sector. As a result of a recently signed bilateral agreement between Canada and the EC, some names previously regarded as generic will be removed from the lists of generic names for wines and spirits in the Trade-marks Act. It is important to note, however, that this distinct protection provided by Article 23 is exceptional. In respect of products other than wines and spirits, certification marks provide a level of protection that accurately reflects the spirit of Article 22 of TRIPS for the protection of GIs.

Examples of Certification Marks as they appear in the Canadian Intellectual Property Office (CIPO) Database:

Registrant:
State of Florida Department of Citrus, Which Sometimes
Functions under the Name Florida Citrus Commission,
1115 East Memorial Boulevard,
Lakeland, Florida 33802,
United States of America

Certification Mark:
276642

Text:
The wares bearing the mark consist of citrus fruit grown in the States of Florida in the United States of America, under specified standards, or are processed or manufactured wholly from such citrus fruit.

Wares:
(1) Oranges, grapefruit, tangerines, orange juice, grapefruit juice, orange juice concentrate and grapefruit juice concentrate, both frozen and unfrozen, and citrus salad.

Date:
1983-02-18

Registrant:
La Federation des Producteurs d'agneaux et de Moutons du Quebec,
555, Boulevard Rolland Therien,
Longueuil, J4H 3Y9
Quebec

Certification Mark:
284446

Text:
La Fédération des Producteurs d'agneaux et de moutons du Québec certifie que la viande d'agneaux et de moutons mise en marché en liaison avec la marque de certification "Représentation d'un agneau" est produite au Québec.

Wares:
(1) Viande d'agneau ou de mouton.

Date:
1983-10-28

Registrant:
Les Producteurs Laitiers du Canada / Dairy Farmers of Canada
Une Corporation Légalement Constituée à but non Lucratif
1801, Avenue Mcgill College, Bureau 1000
Montréal, Quebec
H3A 2N4

Certification Mark:
557215

Text:
L'emploi de la marque de certification est destiné à indiquer que les marchandises spécifiques énumérées cidessus, en liaison avec lesquelles elle est employée, sont conformes à la norme définie qui suit: Tous les produits doivent être fabriqués à partir de lait véritable d'origine canadienne seul ou combiné avec un autre produit agricole selon les standards de transformation, de fabrication et de commercialisation imposés ou reconnus par Les Producteurs Laitiers du Canada conformément aux normes de qualité qui doivent être respectés en vertu de la Loi des Aliments et Drogues et les règlements y afférant.

Wares:
(1) Produits laitiers ou à base de produits laitiers, nommément: pain, lait, crème, beurre, fromage, yogourt, crème glacée.

Date:
2002-01-31

Registrant:
Istituto Salumi Italiani Tutelati (I.S.I.T.) Consorzio Aziende
Produttrici
an Association of Italian Pressed-pork Products Producers
Strada 4 Palazzo Q8
20098 Rozzano
Milano, Italy

Certification Mark:
583805

Text:
The use of the certification mark is intended to indicate that the specific wares listed above in association with which it is used are of the following defined standard: The users of the certification mark are members of the ISTITUTO SALUMI ITALIANI TUTELATI (I.S.I.T) CONSORZIO AZIENDE PRODUTTRICI, an association of Italian presses-pork products producers, and they adhere to its rules and regulations as enclosed herewith.

Wares:
(1) Mortadella.

Date:
2003-06-16