The Canada-European Union Comprehensive Economic and Trade Agreement (CETA) originated in an era that was pre-Trump and pre-Brexit. Not that well received in all quarters at the time, it may now present a timely deal to both sides in the face of the Trump administration’s proposed “America First” policies and the breaking away of one of the EU’s key trading economies.
For brand owners, there are three primary areas where CETA will take effect.
Canada was already in line to adopt the Singapore Treaty and accede to the Madrid Protocol, but since these are basic requirements of CETA that position is now entrenched. Canadian legislation has been enacted and sometime during 2019 (but don’t hold your breath), Canada is expected to adopt the Nice Classification system and implement the Madrid Protocol. When they do, it will represent a huge step forward for Canadian trademarks law.
Canada’s current trademark regime prohibits use of geographic indicators that would be misleading to the public, but only for a limited list of wines and spirits. CETA will expand that protection dramatically to cover a wide range of food and agricultural products.
Once the new legislation comes into force, using any of the listed geographical indicators for goods that fall within the relevant product class will be prohibited if those goods do not originate from the specified region or territory, or if they do originate from that region but were not produced in compliance with local laws and regulations (i.e., you can’t cheat your way around them with cheap knock-offs made for export).
The scope of the prohibition is broad and will prevent use of the terms “in connection with a business, as a trademark or otherwise”. Various exceptions apply, some of which may be critical to brand owners. These include: marks used or applied for before the publication of any intended geographic indicator; certain meats and cheeses such as Feta and Asiago; common names for food products such as Valencia Orange and Black Forest Ham; and - interestingly from a brand protection perspective - comparative advertising that does not appear on labels and packaging, giving brand owners a platform to market their products and compete directly with goods protected by geographic indicators without falling foul of the new legislation.
This sounds exciting, but it’s not. Canada’s current regime for customs enforcement has yet to be rolled out effectively and, at least in the short term, these provisions may not have any teeth. Add to that the impact of delaying foodstuffs and the impact that could have on legitimate shipments, and the sense that this will become a commonly used tool fades even further.
The main impact of CETA on brand owners is the prohibition against using protected geographic indicators on relevant goods, but in a wider context CETA may present a shot in the arm to two major world economies reeling from the acts of their neighbours.
For further information on this and other topics at the International Trademark Association Annual Meeting, please visit our dedicated webpage at www.fasken.com/INTA2017.