Geographical indication

How BC law treats it

Geographical indications are federal law. The Trademarks Act, RSC 1985, c T-13 defines them and sets up a list maintained by the Registrar of Trademarks at CIPO. Originally limited to wines and spirits, protection was extended to certain agricultural products and foods by the Canada-European Union Comprehensive Economic and Trade Agreement Implementation Act, SC 2017, c 6. There is no separate Canadian geographical indications registration statute. A name is entered on the list on the request of a responsible authority, such as a government or producer body that controls the indication, not by an individual business. The proposal is published and interested parties may file an objection on set grounds. Once entered, the Act prohibits adopting or using the indication, or a listed translation, on wine or spirits, or on agricultural products and foods in the categories set out in the schedule, that do not originate in the territory (ss. 11.14, 11.15). It also bars registering a trademark that consists of or contains a protected indication for those goods (s. 12(1)(g) to (h.1)). The Act contains specific exceptions: a list of names treated as common names (such as Parmesan and Black Forest Ham), grandfathering of some prior Canadian uses, and, for Asiago, Feta, Fontina, Gorgonzola and Munster, permission for later users to use the name with a qualifier such as "kind", "type", "style" or "imitation" and a clear indication of the true origin (ss. 11.17 to 11.2). No one owns or licenses a geographical indication. A producer inside the territory may use it if the product meets the territory's rules. A business that wants a privately controlled quality or origin badge can instead register a certification mark under the Trademarks Act, which is a separate and optional route.

What it means for your business

BC wineries, cideries, distillers and specialty food producers must check product names and labels against the list before launch, because many European wine, spirit, cheese and food names cannot be used on Canadian goods, and adding a qualifier or the true origin does not cure the problem except in the narrow cases the Act lists. Importers and retailers face the same exposure. Getting this wrong can mean relabelling stock, losing a trademark application and facing claims from foreign producer groups. Producer associations seeking protection for a regional name need a responsible authority to apply. Example: A Fraser Valley distillery plans to sell a "Cognac-style" brandy. Because Cognac is a protected geographical indication for spirits and the Act's qualifier exception applies only to five listed cheeses, the distillery cannot rely on the word "style", so the distillery chooses its own brand name and describes the product as brandy.

Risks and common mistakes

Believing a business can file its own geographical indication with CIPO and then license it to others. Assuming words like "style" or "type" make it lawful to use a protected name on goods from elsewhere, when the Act permits this only for a few listed cheeses. Filing a trademark application built around a protected regional name and losing the filing fee and launch time. Describing geographical indications as protected in BC rather than under federal law that applies across Canada. Confusing a geographical indication with a certification mark, which is privately owned and registered as a trademark.