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Author: Marsha S. Cadogan
Where a product comes from and how it is produced can be important to safeguarding it as intellectual property. This is the central significance of geographical indications – a form of intellectual property that recognizes that a product can derive distinctiveness based on these attributes. Geographical indications are recognized under the Trademarks Act.[1] The right allows its owners to be the exclusive users of the name and to prevent others from using it in commerce. These names are significant because they must relate to the quality, characteristic, or reputation of the product and have a direct connection to where it is produced.[2] Trademarks are source identifiers. They indicate the sources of products and services and are used to distinguish them from each other.
Eight Differences between Geographical indications and Trademarks in Canada
1. Trademarks are associated with products and services. Geographical indications can only be related to products.
2.Trademarks can be associated with any product. In Canada, geographical indications can only be associated with wines, spirits, foods and agricultural products.
3. Geographical indications must be names or symbols. The symbol will usually include its name (the name of the geographical indication, for example, along with a logo associated with the product’s registration). Trademarks can be words, word and design marks, or non-traditional marks.
4. Trademarks can be owned by an individual or by a company. Geographical indications are collective rights. As such, they must be owned by groups or an entity representing a particular producer group. Producer groups usually own and manage these collectives. A responsible government authority (such as a provincial ministry) can also administer these collectives. Ontario Wine Appellation, for example, is the responsible authority for Ontario Icewine, a registered geographical indication.[3] The British Columbia Ministry of Agriculture is the responsible authority for Fraser Valley wine, another registered geographical indication in Canada.[4]
5. The registration requirements for trademarks and geographical indications differ. Generic names cannot be used as trademarks or as geographical indications. Trademarks can be non-registrable for several reasons, including the likelihood of confusion with existing or pending marks, the use of government or intergovernmental organizations’ emblems as marks, and registrations made in bad faith. While the geographical indication name is relevant to its registration, the product specification is also important. This relates to the scientific, technical, cultural, and traditional reasons that justify why the product should be safeguarded with a GI designation.
6. Trademarks can be licensed, which can help trademark owners commercialize their IP. The marks can also be assigned. However, geographical indications cannot be licensed, and they are not assignable.
7. While trademark rights are jurisdiction-specific, protecting trademarks in other jurisdictions may be based on terms that are more similar or not vastly different from Canadian laws. This is not the same for geographical indications, particularly those that are food- and agri-based. This is because most aspects of trademark laws have been developed through the WTO Agreement on the Trade Related Aspects of Intellectual Property (WTO TRIPS Agreement) and WIPO-administered treaties. However, geographical indication recognition happens mostly through free trade agreements, and more recently, through the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indication (Geneva – GI Treaty). WIPO administers this treaty. Canada is not a member of this treaty. Neither are several other countries. For this and other reasons, different levels of protection exist for food and agri-based geographical indications across countries.
8. Labelling a product as “a style” or “type” version of another trademarked product is not against the law, as long as the labelling or marketing of these products does not contradict unfair competition laws (including trademark depreciation and passing off). This differs for geographical indications, particularly those associated with wines and spirits. However, the names of registered wine and spirit geographical indications are exclusive to their producers. The origin of this dates back to the WTO TRIPS Agreement, and the enhanced level of protection given to wines and spirits under that agreement. This means that Canadian competitors are not allowed to label or market their wines and spirits with the registered geographical indications, even though terms such as a “kind” of, a “type or style” or, or “imitation” are used to indicate the difference. In addition, several foods from the European Union that are sold in Canada are protected as geographical indications and are given the same level of protection as wines and spirits (CETA Agreement). These include Gouda Holland (Netherlands), Kiwi Latina (Italy), Radicchio Rosso di Treviso (Italy), Aceto balsamico di Modena(Italy), in addition to various cheeses and other products.
Although both trademarks and geographical indications distinguish one product from the other, how they are protected under the law shows the degree of difference between them.
This note is for general information purposes and is not intended as legal advice.
[1] Trademarks Act, RSC 1985, c T-13. s. 11.11-11.24.
[2] See the definition of a geographical indication, Trademarks Act, s. 2.
[3] List of Geographical Indications, CIPO, https://www.ic.gc.ca/cipo/listgiws.nsf/giDoc-eng?readform&filenum=1365786
[4] List of Geographical Indications, CIPO, https://www.ic.gc.ca/cipo/listgiws.nsf/giDoc-eng?readform&filenum=1416991.