GEOGRAPHICAL INDICATIONS CANADA

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(No Transcript)
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GEOGRAPHICAL INDICATIONSCANADA UNITED
STATESKenneth McKaySim McBurneyToronto,
Canada
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GEOGRAPHICAL INDICATIONS IN CANADA

• Statutory Framework
• Process
• Exceptions
• Alternatives

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STATUTORY FRAMEWORK

• Geographical indications (GIs) for wines/ spirits
  are protected under s. 11 and 12 of Trade-marks
  Act, R.S.C. 1985, c. T-13.
• Definition GI identifies the wine/spirit as
  originating in territory of a WTO member, where a
  quality, reputation or other characteristic of
  wine/spirit is essentially attributable to its
  geographical origin.
• GIs must be protected in WTO member countries.

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STATUTORY FRAMEWORK

• You CANNOT
• 1. Adopt/use GI as a trade-mark in respect of a
  wine/spirit if the wine/spirit does not
  originate from the territory indicated by that
  GI.
• 2. Register a trade-mark if it is, in whole or
  in part, a GI, where the trade-mark is to be
  registered in association with a wine/spirit
  that does not originate in a territory indicated
  by the GI.

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PROCESS

• Registry of GIs for wines and spirits is
  maintained by Registrar of Trade-marks.
• Process for entering registry
• 1. Apply to Ministry of Agriculture Agri-
  Food Canada for protection of GI.
• 2. GI advertised by publication in Canada
  Gazette by Minister of Industry.
• 3. If 3 months after advertisement date no
  objection raised, then GI enters registry.

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PROCESS

• 4. If objection is made, then Responsible
  Authority can file counterstatement.
• 5. Registrar then makes a decision.
• 6. If Registrar refuses objection, then GI is
  added to registry. If Registrar accepts
  objection, then GI is refused.
• 7. Registrars decision can be appealed to
  Federal Court within 2 months of the decision by
  filing Notice of Application.

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PROCESS

• 8. A copy of the Notice must be provided to
  Registrar and Responsible Authority.
• 9. Additional evidence can be filed.
• Application information can be found at
• http//www.agr.gc.ca/itpd-dpci/topics/spirits_e.h
  tm
• Current GI Registry information can be obtained
  at
• http//napoleon.ic.gc.ca/cipo/listgiws.nsf/gitoc-
  e?OpenForm

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EXCEPTIONS

• You can use a trade-mark including a GI if
• 1. It is your name or the name of your
  predecessor-in- title
• 2. GI is being used in comparative advertising
  in respect of a wine/spirit
• 3. You are a Canadian using GI in good faith
  prior to April 15, 1994 for any business or
  commercial activity
• 4. GI has become generic

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EXCEPTIONS

• 5. GI has ceased to be protected by the laws
  applicable to the WTO Member for which the GI is
  protected
• 6. GI is disused in WTO Member
• 7. GI is identical to a term customary in common
  language in Canada as the common name for a
  wine/spirit
• 8. GI is identical to a customary name of a
  grape variety existing in Canada before TRIPS
  came into force

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EXCEPTIONS

• 9. You have used/made known/registered a
  trade-mark for 5 years and no proceedings
  have been brought and you had no knowledge that
  it was a GI
• OR
• 10. You have filed a trade-mark application or
  registered a trade-mark or used a trade-mark
  before GI became protected.

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ALTERNATIVES

• The Trade-marks Act provides for GI protection
  specific to wine and spirits
• You can also protect a GI for goods other than
  wine and spirits, through
• 1. Certification Marks
• 2. Law of passing off OR
• 3. Other Statutes (e.g. Food and Drugs Act
  R.S.C. 1985, c. F-27).

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GEOGRAPHICAL INDICATIONS IN THE UNITED STATES

• Statutory Framework
• Process
• Lanham Act.
• Alcohol and Tobacco Tax Bureau of the U.S.
  Treasury Department (TTB).

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STATUTORY FRAMEWORK

• A GI is protected
• 1. As collective/certification mark under s. 4,
  Lanham Act for any goods/services and
• 2. By TTB specifically in relation to wine.
• You CANNOT
• 1. Adopt/use/register any trade-mark
  confusingly similar with a certification/collect
  ive mark in respect of any similar or related
  goods or services
• 2. Use American Viticultural Area (AVA) on
  wine not from area identified by AVA.

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PROCESS Lanham Act

• A registry of geographical collective and
  certification marks is maintained by USPTO.
• A geographical collective mark must indicate that
  the user is a member of association owning the
  mark and meets associations standards for
  admission.
• A geographical certification must certify
  regional origin and can indicate other
  characteristics of the good or service.

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PROCESS Lanham Act

• Process to enter registry as geographical
  collective mark
• 1. Any collective or association fairly using
  the geographical term can file an application
  with USPTO.
• 2. A specimen of use of the collective mark in
  commerce must also be supplied.
• 3. Public notice of the application is issued.

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PROCESS Lanham Act

• 4. A third party can oppose the application.
• 5. If application is refused, can appeal to
  USPTOs Trade-mark Trial and Appeal Board.
• 6. If application is accepted, the mark is
  entered on the register.
• 7. Once on the register, a mark remains if it is
  in use and registration is renewed.

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PROCESS Lanham Act

• Process to enter registry as geographical
  certification mark
• Any entity with authority to exercise control
  over a geographical term (e.g. govt. body or
  entity with govt. authority), which does NOT use
  the mark on goods or services covered by the
  registration, can file an application with USPTO.

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PROCESS Lanham Act

• 2. A copy of the standards established for
  certification and specimen of use of the mark in
  commerce must be supplied.
• 3. Public notice of the application is issued.
• 4. A third party can oppose the application.
• 5. If application is refused, can appeal to
  USPTOs Trademark Trial Appeal Board.
• 6. If application accepted, mark is entered on
  the register.

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PROCESS Lanham Act

• 7. Once on the register, a mark remains as long
  as it is in use and registration is renewed.
• Information on geographical certification or
  collective marks can be found at
• http//www.uspto.gov/web/offices/dcom/olia/global
  ip/geographicalindication.htm

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PROCESS TTB

• Registry of GIs maintained at TTB.
• Per TTB, GI is the name of a defined American
  geographical region recognized locally or
  nationally with viticultural features that
  distinguish it from surrounding areas.
• NOTE TTB is now also adding foreign GIs.
• Process to enter GI on TTB registry
• 1. Anyone can apply to register GI by
  submitting petition to TTBs Director.

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PROCESS TTB

• 2. Applicant must submit evidence that
• name is known locally or nationally
• boundaries are as identified in the
  application
• geographical features are distinct to the area
  and
• area boundaries based on features found on U.S.
  
• Geological Survey map.
• 3. Public notice of petition is issued.
• 4. No formal opposition process available, but a
  third party can submit observations regarding
  recognition.

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PROCESS TTB

• 5. If petition is refused, applicant can appeal
  to Federal Court.
• 6. If petition is accepted, GI enters register
  on perpetual basis.
• 7. Third parties opposing GI can challenge
  registration to Federal Court.
• Information on GI protection through CFR can be
  found at
• http//www.ttb.gov/appellation/index.shtml