As previously reported in E-TIPS® Newsletter, the Canadian government has tabled Bill C-30, outlining measures to implement the Canada-European Union Comprehensive Economic and Trade Agreement (CETA).  Regarding Canadian trademark law, the legislation expands protections for geographical indications (GIs).

Canada’s Trade-marks Act currently provides for the protection of GIs covering wine and spirits. The amendments expand this protection to “agricultural products” and “food,” including cheeses, sausages and olives. Protection can be obtained by a “Responsible Authority” which is sufficiently connected with and knowledgeable about a GI product.  GI protection allows a Responsible Authority to oppose trade-mark applications, take advantage of import and export prohibitions, and to use the indication, regardless of prior trade-mark registrations.

Some GIs will be protected as soon as the amendments come into force. The amendments also allow for the recognition of new GIs, subject to objections by a third party. For instance, a person may object to the recognition of a GI if the GI is confusing with a mark which has been previously registered, used or applied for in Canada.   However, this ability to object appears to be restricted to GIs for agricultural products or food (excluding wine or spirits).

Importantly, the amendments create a separate approach for assessing confusion between a trade-mark and a GI. The definition of “confusing” in section 2 of the Act has been amended to exclude GIs. Instead, the amendments set out a modified list of factors differing in substantial respects from the traditional confusion test set out in subsection 6(5). For instance,

  • the GI confusion test first sets out relevant surrounding circumstances for a GI, and then provides separate relevant factors for the mark to which the GI is compared;
  • “inherent distinctiveness” is not listed as a relevant factor for the GI, but it appears to be relevant to the mark to which the GI is compared. This suggests that if both the GI and the trade-mark are not inherently distinctive, the test may favour the GI; and
  • the nature of the trade is not listed as a factor, suggesting that an analysis of the respective channels of trade for the products associated with the GI and those associated with the mark may not be relevant.

Like the subsection 6(5) factors, the GI confusion factors are not exhaustive. Therefore, the effects and extent of these differences will need to be clarified in the future.

Summary By: David Bowden

E-TIPS® ISSUE

16 11 30

Disclaimer: This Newsletter is intended to provide readers with general information on legal developments in the areas of e-commerce, information technology and intellectual property. It is not intended to be a complete statement of the law, nor is it intended to provide legal advice. No person should act or rely upon the information contained in this newsletter without seeking legal advice.

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