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This article has been written by  Prathna Vohra, pursuing the Diploma in US Intellectual Property and Paralegal from LawSikho.

Introduction

This publication introduces geographical indications (GIs), explaining their basic features, use, and protection as an intellectual property right. Written for non-experts, it is a starting point for readers seeking to learn more about the topic. While the publication focuses primarily on the protection of GIs as an intellectual property right, it also addresses the economic and social dimensions of GIs and responds to the questions most frequently raised by policymakers, producers, and other stakeholders who wish to begin the process of developing a GI scheme for a product.

A brief introduction to GI

A geographical indication (GI) is a label that is applied to items that have a specific geographical origin and that have traits or a reputation that are due to that origin. A sign must identify a product as coming from a specific location to operate as a GI. Furthermore, the product’s traits, characteristics, or reputation should be primarily owing to its origin. There is an obvious link between the product and its original site of production because the attributes are dependent on the geographical location of production.

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Section 2(1)(e) of the  Geographical Indications of Goods (Registration and Protection) Act, 1999 states that: “geographical indication”, in relation to goods, means an indication which identifies such goods as agricultural goods, natural goods, or manufactured goods as originating, or manufactured in the territory of a country, or a region or locality in that territory, where a given quality, reputation or other characteristics of such goods is essentially attributable to its geographical origin and in the case where such goods are manufactured goods one of the activities of either the production or of processing or preparation of the goods concerned takes place in such territory, region or locality, as the case may be.

From the standpoint of the consumer, GIs serve to signal that the products are made in a specific location or that they have qualities that are unique to products made in that region. Many GIs have significant economic and cultural significance in the areas they represent. Consider Napa Valley and Champagne Port as the best suitable examples.

Meaning of GI protection

GI is a type of collective protection awarded to a group of manufacturers who are all from the same location where the product was created. The GI denotes the product’s place of origin, and any manufacturer in that geographic location can use it for that product. Darjeeling tea, for example. The use of the same geographical indication is permitted by all manufacturers and producers in the same region. A GI is a code that identifies a product based on its origin. The nature of the GI is determined by factors like geography, human work, climate, and so on in a specific geographical place. Given all these caveats, it can be difficult to properly understand how GIs are protected in Canada, so the following Figure 1 explains this concept with the help of hypothetical scenarios.

 

Figure 1:

Protected GI

Use by a second party.

Is used by the second party allowed?

“Cheeilal” for cheese from India.

Use of “Cheeilal” on cheese packaging; the product is made in India.

No

“Oliviano” for olive oil from Russia.

Use of “Oliviano” on dry-cured meat; product is made in Russia.

Yes

“Meat Me” for dry-cure meat from Germany.

Use of “Meat Me” for dry-cured meat; product is made in Canada; owner’s name is “Pratzie.”

Yes

“Asiago” for cheese from Italy.

Use of “Asiago Style Cheese” for cheese; the product is made in Canada.

Yes,
(exception specific to Asiago applies — addition of “style” is permitted).

“Petite Cantal” for cheese from London.

Use of “Petite Cantal like cheese” for cheese; the product is made in Canada.

No,
(addition of “like” is insufficient. This exception only applies to certain cheeses but not Petite Canal).

“Flamingo” for cheese from Chicago.

Use of “Flamingo” for cheese; the product is from Canada.

Yes,
(Use of “parmesan” is permitted based on an exception).

 

When it comes to translations of ordinarily protected GIs, the protection provided by GIs becomes more complicated. The use of a GI’s translation for wines, spirits, or GIs protected under CETA would remain protected. However, the use of translations of GIs protected in Canada through applications would be protected only if the translation was likewise classified as a protected GI.

CETA and its impact

The Comprehensive Economic and Trade Agreement (CETA) was signed in October of 2016. It aims to decrease trade barriers between the EU and Canada and includes a wide range of topics, including tariffs, labor, intellectual property, and marine vessel operations. The CETA Implementation Act, which alters various statutes, notably the Trade-marks Act, is primarily responsible for its implementation in Canada. On September 21, 2017, the amendments went into effect.

Impact of modifications on GIs

Protected items

Historically, GI protections have only been applied to wine and spirits, but these amendments will immediately create over 170 new protected indications (with no chance of opposition) for a wide range of food and agricultural products, including cheese, olives, oils, meats, spices, nuts, fruit, hops, and beer. Feta, Asiago, Taleggio, and other similar cheeses are examples. While only Canada and the EU are parties to CETA, the modifications to the Trade-marks Act extend protection to Korean indications mentioned in the Canada-Korea Economic Growth and Prosperity Act and allow any country to apply to the minister to protect its GIs.

Way to seek protection

Prior to these revisions, the most important protections for commodities only applied to wine and spirits, and only if they didn’t come from a specific territory. The safeguards have now been extended to food and agricultural products, including beer, because of these revisions. Furthermore, the adoption and use of a protected GI is banned under these changes if the goods do not originate in the territory or, if they do, are not produced according to the territory’s standards. One restriction is that the GI is only restricted if the offending product is in the same category, thus “Bordeaux” can still be used for biscuits or sweets, for example. Harmonize is used to categorize the items. The World Customs Organization’s harmonized commodity description and coding system is used for categorisation.

The Canadian Border Services Agency’s (CBSA) protection has also been extended to GIs because of the modifications. Previously, a registered trademark proprietor may request assistance from the CBSA in combating counterfeits of its trademarked items under sections 51.03 and 51.04. Sections 51.03 and 51.04, as revised, now offer the same border safeguards to GIs.

Applications for GI protection are almost certain to increase as a result of these enhanced protections and a quicker process, not just from Canada, the EU, and Korea, but also from other countries.

Exceptions

There are a few exceptions to these new safeguards. Both incumbent and non-incumbent enterprises benefit from these exceptions. Existing firms that have been using terms like “Feta,” “Munster,” or “Asiago,” among a few others, will be exempt from the limitations if they have been using them since before specific dates. Other major exceptions include where the responsible authority agrees; comparative advertising if it is not on the label or packaging; where the GI is a person’s name; and where the GI is the product’s common name in Canada. The modified TMA has already specified certain common names, such as parmesan cheese and black forest ham.

Modernisation to protection of geographical indicator

Previously, GI protection was exclusively granted to wines and spirits in Canada. However, as of September 21, 2017, and because of the EU-Canada Comprehensive Economic Trade Agreement (CETA), Canadian law now protects 24 additional agricultural and food products: fresh, frozen, and processed meats, cereals, sugars and syrups, dry-cured meats, milling industry products, and so on. Pasta, products made from fresh, frozen, or processed fish butter, hops, mustard paste, cheeses, ginseng, beer, oilseeds, table and processed olives, butter, hops, mustard paste, cheeses, ginseng, beer vegetables, both fresh and processed, beverages made from plant extracts vinegar, fruits, and nuts, both fresh and processed. Sierra de Segura is on the list of protected GIs maintained by the Canadian Intellectual Property Office (CIPO). Few out of a huge list of protected GIs of Canada are enlisted:

S. No

Product

File No.

Date Entered

1.

Siurana

1858577

2017-09-21

2.

Sizzano

1274280

2007-01-26

3.

Sliwovitz del Friuli Venezia

1270853

2006-10-20

4.

Sliwovitz del Trentino

1270857

2010-12-06

 

Request for a GI to be added to the list of GIs in Canada

Legislation

Under paragraph 11.12(1) of the Trademarks Act, a request can be made to have a geographical indicator (GI) added to the list of GIs in Canada (“the Act”). Section 2 of the Act defines a geographical indication as follows:

  • An indication that wine or spirit, or an agricultural product or food of a category listed in the schedule, originated in the territory of a WTO Member, or a region or locality within that territory, if the wine or spirit, or the agricultural product or food’s quality, reputation, or other characteristic is essentially attributable to its geographical origin.
  • The request, along with all supporting evidence, must be filed in writing to the Canadian Intellectual Property Office (CIPO) in either English or French, or be translated into one of those languages (except for the GI itself). The requesting party may use the sample forms for wines, spirits, agricultural products, and food, but it is not needed to use this format if all required information is provided. A responsible authority for the wine, spirit, agricultural product, or food in question must submit the request on behalf of or for the wine, spirit, agricultural product, or food in question. According to subsection 11.11(1) of the Act, a responsible authority is in relation to a wine or spirit, or an agricultural product or food of a category listed in the schedule, the person, firm, or other entity that, in the minister’s opinion, is sufficiently connected with and knowledgeable about that wine or spirit, or that agricultural product or food to be a party to any proceedings under this Act, due to state or commercial interest.
  • Each GI must have its own request, which must be accompanied by the required fee for each request. If the fee for a request for GI protection is received by the Office in 2021, it will be $469.10. A fee of $468.16 will be needed if the fee is received on or after January 1, 2022.
  • It is recommended to use the CIPO Fee form for sending payments to CIPO by mail, facsimile, or hand delivery. Before the request can be handled, the fee must be paid, and the price will be charged regardless of the outcome of the review.
  • The relevant authority oversees supplying the requested information as well as replying to any related objections or queries. The documentation that was supplied with the request will not be returned.
  • CIPO will examine all requests. The competent authority may be asked to provide further information to support the request during the review process. CIPO may ask agriculture and agri-food Canada for more information on the quality or reputation of the geographical indicator while reviewing a request.

Process to request that a GI be entered on the GI list of Canada

  1. Sample forms for wines and spirits, as well as agricultural and culinary goods, are available on the CIPO website, although they are not necessary to be used. It’s possible.

2. CIPO Examination • During the review of a request, a CIPO examiner may request more information about the quality or reputation of the geographical area. Agriculture and Agri-Food Canada have provided an indication.

3. CIPO will publicize details of the proposed GI on its website when a CIPO examiner concludes that a request meets all requirements.

  • Anyone who is interested has two months from the date of publication to make a complaint. A statement of Objections is a document that expresses a disagreement with something.

4. Proceedings, if any

  • In nature, opposition proceedings are identical to trademark opposition processes. The responsible party is notified after an objector files a Statement of Objection.
  • To file a counter-statement, the authorities will be necessary. Both parties are to blame.
  • The objector will then have the chance to file evidence with the authority.
  • Attend an oral hearing and provide written submissions. There is a computer-aided design (CAD).
  • A $1,000 government fee is required to file a Statement of Objection to begin the process.
  • objections are being heard

5. If no statement of objection is made, or if the objection proceeding is withdrawn or dismissed, the proposed GI will be added to CIPO’s list.

Role of CIPO

The Canadian Intellectual Property Office (CIPO) oversees administering Canada’s intellectual property rights system, which includes granting patents and registering trademarks, copyrights, and industrial designs. Innovation, Science, and Economic Development Canada (ISED) established it as a Special Operating Agency in 1992. CIPO’s mission is to support Canada’s innovation and economic success by increasing market certainty through high-quality, timely IP rights; fostering and supporting invention and creativity through knowledge sharing; raising awareness to encourage innovators to better exploit IP; assisting businesses in competing globally through international cooperation and promotion of CIPO and administration effectively

Process to request that a GI be entered on the GI list of India

Enforcement of protected GIs in Canada

Protected GIs can be enforced by a variety of procedures, including:

(i) The Canada Border Services Agency (“CBSA”)- Through the CBSA Request for Assistance Program, the Trademarks Act is enforced.

Intellectual property rights holders can submit a formal request to temporarily detain suspected counterfeit and pirated items at the border under the Request for Assistance Program (RFA). These applications are valid for two years (and can be renewed every two years at the option of the applicant). As a result of CETA, holders of GI rights can use this program to provide protection for their GIs.

(ii) The federal courts- An owner may file a judicial action in Canada to enforce the GI against unlawful use by a third party. Litigation, on the other hand, is costly and complicated, therefore a GI owner should seek legal advice before pursuing this method of GI protection. 

(iii) The Food and Drugs Act- The Food and Drug Act contains provisions that make it illegal to use deceptive labeling. By filing a complaint with the Canadian Food Inspection Agency, a GI owner can have a GI enforced (CFIA). The CFIA is responsible for enforcing the Food and Drugs Act’s food safety and labeling regulations. To report a food safety or labeling problem, a GI owner can use an online form given by the CFIA to file a complaint. After that, the CFIA may launch an inquiry and take administrative action.

Infringement of IP and remedies to it in Canada

The Canadian law does not specifically deal with GI infringement but overall IP infringement for which it has governing legislations and procedures to deal with.

In Canada, there are two types of courts that deal with IP issues:

  • the system of federal courts,
  • the system of provincial courts.

Some IP cases must be heard in federal court, while others must be heard in provincial courts. In general, patent, copyright, and trademark infringement cases can be handled in either court system, however, an action to nullify IP rights must be brought before the federal court. As a result, deciding which court to file your case in becomes a strategic decision. In some cases, you may be obliged to litigate in both state and federal courts.

Federal courts can only try cases that fall under their authority. IP registrations can only be impeached, invalidated, or expunged by the federal court. The federal court is the only court with exclusive jurisdiction over the following sorts of cases:

  • Patent,
  • Copyright,
  • Trademark,
  • ID.

Superior courts of the provinces

Provincial courts mostly hear criminal and private law cases (such as breach of contract), but they can also hear IP cases. For issues that are primarily contractual in character or based on intricate economic activity, such as a breach of confidence coming from a departing employee, provincial courts may be the only choice. You must move through the provincial courts’ system if your IP issue is based on one of these causes of action.

  • Small claims court is a type of court that deals with a minor.

A small claims court case is a quick, straightforward, and less expensive means for plaintiffs to enforce their IP rights in court. The provincial courts’ system has a specialist branch. A plaintiff seeking monetary remedy within the monetary limit of their provincial small claims court has only one option: a small claims court lawsuit. Each province and territory have a monetary limit on the number of damages that can be claimed. The small claims court in Ontario has jurisdiction over matters involving claims of less than $35,000, while Alberta has the highest monetary limit in the country, at $50,000.

Conclusion

GIs, although being one of the earliest kinds of IP, has only recently attracted widespread attention. The requirement to comply with TRIPS Agreement obligations prompted an emphasis on GIs in many countries. Countries quickly understood the potential worth of this type of IP. GIs can be excellent tools for fostering locally based development because they are embedded in a territory. Because of their intimate ties to tradition, they may have a favorable impact on the preservation of TCEs and TK.

References

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