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Geographical Indications in Canada, the EU, India, Switzerland and Serbia: A Brief Comparision of Legal Frameworks

Geographical Indications in Canada, the EU, India, Switzerland and Serbia: A Brief Comparision of Legal Frameworks

Champagne. Parma Ham. Feta Cheese. Café de Colombia. Jamaican Jerk. These are all types of geographical indications, designated as such because there is a direct and traceable relationship between the product and its place of origin. This linkage must be based on specific quality, characteristics, or reputation of the product with a natural or human element of its place of origin.

Geographical Indications (GIs) are usually based on terroir, but there is much more to GIs than ties to land or seas, some products are designated as such because of a strong connection between the end products and peoples ways of doing things. For example, in India, GI designations are used on furniture, handicraft, cosmetics and other commodities. In Switzerland, GI designations can be used on pharmaceutical commodities that are manufactured in specific regions, such as in Basel. The tie to the land therefore, does not have to be very close, but could be a combination of land, the way a specific group of people or region within a specific place does this, or the seas (for those regions where aquaculture GIs are registrable.

GI Framework In Canada (Federal)

In Canada, GIs fall under the federal Trademark Act and relate to agri, food, wine and spirit products that are closely connected, either by quality, characteristics or reputation to where they are produced or grown by the region’s natural or human factors. If the GI name is already used by a competitor as a trademark, then the GI cannot be registered with that name. Whether there is a likelihood of confusion between the GI seeking registration in Canada (non EU-CETA GIs) and a pending or existing trademark, depends on (i) how long the GI is associated with the agri or food product in its place of origin and how well-known it is, and (ii) how close a resemblance (whether by ideas suggested by them, sound or appearance) there is between the GI and the trademark. The more established the trademark is in consumer markets, and the more inherently distinctive the trademark are integral in deciding whether a likelihood of confusion claim will be successful to prevent a GI from being registered under Canada’s Trademark Act (sec. 11).

GIs in the European Union

As in Canada, the European Union, under its EC Regulation 1151/2012 only recognizes agricultural and food based products (and wine and spirits) as GIs. Protection is more stable and cancellation is difficult. GI laws are very expansive in the EU, and the rules governing how the laws are applied is framed upon a preamble with over 60 connotations, which focus on innovation, development, rural development and securing producer (farmers, processors, distributors etc) groups. In the EU GIs, once registered, cannot become generic, although generic names cannot be registered as GIs. Essentially, the GI concept is revered in the EU (although as in most other jurisdictions globally, GI industries have to contend with governance and legal issues, which fall outside the purview of this blog – but see Marsha S. Cadogan (co-authored) CETA and the Future of Geographical Indications in Canada, CIGI Paper).

GI framework in India

India’s GI legislation pre-dates most others outside of the EU, having started close to the beginning of the 21st century. India has 361 products registered as GIs, with 348 local products and 16 non-domestic products with GI designations. The difference between India’s GI framework and that of Canada and the EU, is that it allows for commodities other than wine and spirits to be registered. Therefore, a look at India’s GI registry indicates products as diverse as toys, mangoes, rice, wine and furniture. The GI system in India is not without its challenges, especially regulatory, which has involved the registration of products with very loose connection to their place of origin. However, India’s GI strategy is an example of how far GI policy and rules governing the definition of GIs can go.

Switzerland follows a similar trajectory with India of innovative approaches to GIs. Under Swiss GI rules, products such as watches, pharmaceuticals, along with foods and wines and registered as GIs.

Serbia has done what no other jurisdiction has done before – used its GI framework to register a service in the health tourism area. Can this be done elsewhere? A lot depends on getting rid of a tunnel vision approach to GI protection. Only then, it may be a more usable form of IP in the Canadian economy.

This post is for general information only and is not meant to be legal advise. For legal advise on geographical indications, contact Marsha at [email protected]