1. Canada’s Approach to Geographical Indications
Global Affairs Canada; Innovation, Science and Economic Development Canada; Canadian Intellectual Property Office; Canadian Food Inspection Agency; Canada Border Services Agency
December 4, 2018

2. Canada-European Union Comprehensive Economic
and Trade Agreement (CETA)
Before CETA
Historical nature of Canadian legal framework and marketplace
World Trade Organization TRIPS Agreement
1996: Canada implements Wines & Spirits GI System for wines & spirits – TRIPS Article 23
Certification marks for all other goods: level of protection established by TRIPS Article 22
No recognition in Canadian law for agricultural products and food GIs
Judicial enforcement measures only for wines and spirits GIs and certification marks
GIs not part of intellectual property border measures regime
Canadian regulatory framework to protect Canadian consumers that does not allow a person to manufacture, prepare, package, label, sell, import or advertise a food commodity in a manner that is false, misleading or deceptive or is likely to create an erroneous impression regarding its origin
Since 1997: Over 650 wines & spirits GIs applied for and added to Canada’s List of Protected Geographical Indications - over 600 of these from EU Members

3. Canada-European Union Comprehensive Economic
and Trade Agreement (CETA)
CETA obligations for the protection of GIs:
Canada recognized 171 EU GIs for agricultural products and foods
Scope of GI obligations: applies to GIs falling within product classes listed in Annex 20-C
Product classes relate to agricultural products and food GIs
E.g. Cheeses, fresh, frozen and processed meats, etc (based on Harmonized System)
Legal means to prevent use of EU GIs listed in Annex 20-A for a product falling within specified product class, and that either:
Does not originate in the place of origin specified in Annex 20-A for that GI
Does originate in place of origin specified in Annex 20-A, but was not produced or manufactured in accordance with laws/regulations of the other Party if for consumption in the other Party
Enhanced TRIPS Article 23 wines and spirits protection applied to agricultural products and food GIs
For example, majority of GIs protected under CETA – protection provided even when true origin of the product is indicated or the GI used in translation or accompanied by qualifying expressions (e.g. kind, type, style, etc)

4. Canada-European Union Comprehensive Economic
and Trade Agreement (CETA)
Historical nature of Canadian marketplace
Consultation and Review Process
Exceptions
General exception for prior trademark rights prior to provisional application of CETA (September 21, 2017)
Grandfathering (Asiago, Feta, Fontina, Gorgonzola , Munster, Beaufort, Nürnberger Bratwürste, Jambon de Bayonne)
English & French translations of commonly used food names
Individual components of multi-part terms
Customary name of plant varieties or animal breed

5. Canada-European Union Comprehensive Economic
and Trade Agreement (CETA)
After CETA
Judicial enforcement measures for agricultural products and food GIs
Counterfeit GIs now added to the scope of intellectual property rights subject to border enforcement in Canada
Canadian regulatory framework to protect Canadian consumers that does not allow a person to manufacture, prepare, package, label, sell, import or advertise a food commodity in a manner that is false, misleading or deceptive or is likely to create an erroneous impression regarding its origin
Open system: Expanded the scope of Canada’s wines & spirits GI system to now include categories of agricultural products and foods:
Allows for foreign and Canadian applications for agricultural products and food GIs
Applies CETA level of protection to GIs from any country

6. GI Framework under Canada’s Trade-marks Act
Certification mark protection still available
Rights holders can prevent the use of a certification mark if that use: indicates that the origin of a good is other than its true origin and this misleads the public; or amounts to unfair competition.
Process to protect certification marks
Application
Examination
Opposition
Allowance
Registration
Renewal
Application – Applicant files with CIPO
Examination – CIPO examines for compliance
Advertising – Notification to third parties of mark
Opposition – If third party objects, hearing before Trademark Opposition Board
Allowance – If no successful opposition
Registration – Upon fee
Renewal – Applicant can renew every 15 years

7. GI Framework under Canada’s Trade-marks Act
Process to protect GIs
Request
Examination
Publication
Objection
Listing
Protection
Request – Responsible Authority files with CIPO
Examination – CIPO examines for compliance in cooperation with AAFC
Publication – GI is published on CIPO website to notify third parties
Objection – If third party objects, hearing before Trademark Opposition Board
Listing – GI is entered on the List of Protected GIs
Protection – Term is unlimited

8. Canada’s Open GI System
The Canadian Intellectual Property Office (CIPO) and Agriculture and Agri-Food Canada (AAFC) are responsible for administering the GI system in Canada
CIPO is responsible for the final recommendation to the Minister of Innovation, Science and Economic Development, informed by any expert advice or information provided by AAFC
Making a request
Requests to have a GI entered on the list of protected GIs in Canada must be submitted to CIPO
Requests and all supporting documentation must be submitted in writing and be in either English or French (except for the GI itself)
A separate request must be made for each GI
The responsible authority making the request may use the sample forms available on CIPO’s website, but these forms are not compulsory so long as all the required information is provided

9. Canada’s Open GI System
Content of Request
The geographical indication
For an agricultural products or food GI, translation(s) of the geographical indication in all languages for which protection is sought
For a wine or spirit GI, the good associated with the indication (i.e. “wine” or “spirit”)
For an agricultural product or food GI, the common name of the agricultural product or food and the category to which the agricultural product or food belongs, as set out in the Schedule to the Trade-marks Act.
The territory, region or locality of the member state in which the wine, spirit, or agricultural product or food is identified as originating.
A list of the applicable law(s) which protect the geographical indication in the territory, region or locality, and a copy of the law(s) translated into English or French

10. Canada’s Open GI System
Content of Request
A detailed description of the quality, reputation or other characteristic of the wine, spirit, or agricultural product or food that is essentially attributable to its geographical origin
Such characteristics may include: environmental conditions such as climate or water quality, conditions of production, historical origins, production knowledge/skills/expertise of local producers
The name of the responsible authority and evidence that it meets the definition
A responsible authority is a person, firm, or other entity that is, in the opinion of the Minister, by reason of state or commercial interest, sufficiently connected with and knowledgeable of the goods to be a party to any proceedings under the Trade-marks Act in respect of the request
For illustrative purposes, a responsible authority may have a "state or commercial interest" by way of: being a national or regional government; having regulatory authority in the region concerned; being an association of producers in the region concerned; being a producer in the region concerned

11. Canada’s Open GI System
Content of Request
The postal address of responsible authority's principal office or place of business in the member state
The postal address of responsible authority's principal office or place of business in Canada (if any)
The name and address in Canada of a person or firm on whom any document may be served
Objections
If an indication meets the criteria to be entered on the list of protected GIs, CIPO will recommend that the Minister of Innovation, Science and Economic Development Canada publish a statement proposing that the indication be entered on the list
Within two months after the publication of the statement, any interested party may, upon payment of the prescribed fee, file a statement of objection with the Registrar of Trade-marks
The Registrar of Trade-marks will enter the indication on the list if:
no statement of objection has been filed and served on the responsible authority and the time for the filing of a statement of objection has expired; or
a statement of objection has been filed and served, but it has been withdrawn or deemed to have been withdrawn or it has been rejected or, if an appeal is taken, it is rejected in the final judgment given in the appeal

12. Canada’s Open GI System
Process to Request GI protection in Canada -

13. Geographical Indications: Rights and Enforcement
Enhanced Protection in Canada
Wines and spirits GIs: enhanced level of protection established under TRIPS Article 23 (s of Trade-marks Act)
Rights holders can prevent the use of GI even if:
The true origin of the good is indicated (“Canadian Rioja”)
The GI is used in translation (“Burgundy Aligote”)
The GI is accompanied by a qualifying expression such as “kind”, “type”, “style”, or “imitation” (“Scotch-style whisky”)
CETA: This enhanced protection has now been extended to certain categories of agricultural products and foods (e.g. processed meats, cheeses, beer etc) .
Both for the GIs protected under CETA AND GIs that are granted protection under the recently expanded open system (s of Trade-marks Act)

14. Geographical Indications: Rights and Enforcement
Enhanced Protection in Canada
Additionally: legal means to prevent the use of GIs on products  that originates in the territory indicated by the protected GI if it was not produced or manufactured in accordance with the law applicable to that territory (s & s of Trade-marks Act)
Note that Canada also opted to extend this additional level of protection that applied to EU GIs protected under CETA to wines and spirits GIs in Canada (s of Trade-marks Act)
CIPO will not register a subsequent trademark that contains, in whole or in part, a protected GI not originating in a territory indicated by the GI

15. Geographical Indications: Rights and Enforcement
Enforcement – Judicial
GIs are private rights and enforced through judicial proceedings
Remedies available include:
Damages
Profits of infringers
Injunctions
Delivery Up

16. Geographical Indications: Rights and Enforcement
Enforcement – Border Measures
Request for Assistance (RFA) Program: with implementation of CETA, expanded to include counterfeit GIs
CBSA has authority to detain shipments at the border if suspected of containing counterfeit GIs
Contact rights holders regarding suspected counterfeit or pirated shipments
Provide rights-holders with information to facilitate a civil action
Perishable goods will be stored 5 days while decision is made to file civil suit; non-perishable goods (e.g. wines & spirits) will be stored for 10 days
Responsible Authorities should use the RFA filing program – the process is simple and the application is free! -

17. Canadian Origin Labelling Requirements
Enforcement
Consumer protection in the Canadian marketplace
CETA Article (4) & (5)
4. Each Party shall provide for enforcement by administrative action, to the extent provided for by its law, to prohibit a person from manufacturing, preparing, packaging, labelling, selling or importing or advertising a food commodity in a manner that is false, misleading or deceptive or is likely to create an erroneous impression regarding its origin.
5. In accordance with paragraph 4, each Party will provide for administrative action in respect of complaints related to the labelling of products, including their presentation, in a manner that is false, misleading or deceptive or is likely to create an erroneous impression regarding their origin.

18. Canadian Origin Labelling Requirements
Fundamental Principle for Canadian Food Labelling
All foods sold in Canada (imported or domestic), must be labelled in a manner that is not:
False;
Misleading or deceptive; or
Likely to create an erroneous impression regarding its character, composition, merit, […], origin or method of preparation related to Canadian food requirements.
Labelling facilitates informed purchasing decisions and is accomplished, in part, by requiring:
Mandatory company contact information
An indication that wholly imported foods are imported

19. Canadian Origin Labelling Requirements
For All Imported Foods
When a food product is wholly manufactured outside of Canada its label must show that the product is imported.
This information can be done by:
Providing the name and principal place of business of the foreign manufacturer;
Stating "imported for" or "imported by" followed by the identity and principal place of business of the Canadian company; or
Providing the name and principal place of business of the Canadian company and the country of origin of the product.

20. Canadian Origin Labelling Requirements
For Certain Imported Foods
Previous commodity-based regulations established mandatory country of origin declarations for certain imported foods:
wine and brandy
meat products
dairy products
maple products
honey
some processed fruit and vegetable products
fish and fish products
fresh fruits and vegetables
shelled egg
processed egg
The SFCR consolidated these requirements into a single regulation. As a next step, these requirements are being reviewed through Food Labelling Modernization.

21. Canadian Origin Labelling Requirements
Food Labelling Modernization
Will update labelling requirements that were not addressed in the SFCR with the goal of
introducing consistent requirements for all foods, where possible
responding to strong consumer interest in knowing where imported food is coming from
Proposes that all wholly imported foods must state a country of origin on the label.
Regulatory pre-publication for consultation is expected in Spring 2019 which will be accompanied by a second TBT notification.

22. Canadian Origin Labelling Requirements
Compliance and Enforcement
Anyone can report a food safety or labelling complaint or concern to the Canadian Food Inspection Agency
The Compliance and Enforcement Policy outlines the CFIA's approach in this area. The CFIA has a number of tools to choose from including:
Performing inspection activities
Assisting regulated parties in understanding requirements
Using appropriate measures to respond to non-compliance
The CFIA has flexibility to respond to non-compliance based on factors such as the potential or actual harm, the compliance history of the regulated party and the intent

23. Canadian Origin Labelling Requirements
Resources
To report a labelling issue:
For more information on current Country of Origin Labelling Requirements:
For more information on Food Labelling Modernization:
CFIA Compliance and Enforcement Policy

24. Going Forward: GIs in Canada
CETA Article – Amendments to Annex 20-A
By consensus of the Parties
CETA Article (2)
Subject to domestic consultation process (same as the CETA GIs)
Subject to Parliamentary process, including amending domestic legislation
CPTPP & CUSMA
Carve out for past international agreements (e.g. CETA, CDA-EU Wines & Spirits Agreement)
Open GI system – apply today!
Straightforward administrative process
Published for 2 month objection period
TRIPS 23-plus level of protection
Example: Prosciutto di Carpegna: first food GI protected under open GI system
Application to CIPO: March 9, 2018; Protected: September 11, 2018

25. QUESTIONS?
Please contact: