1. What is a geographical indication of origin?
A geographical indication of origin (GI) is a type of intellectual property defined in the Trademarks Act. GI refers to a name, sign or other indication used to identify a wine, spirit, agricultural or food product as originating in a country, territory, region, or locality that possesses a quality, reputation or other characteristic(s) attributable to that country, territory, region, or locality.
GIs provide a way for businesses to protect their geographically unique products. Think of Mexico's Tequila, France's Roquefort cheese, Italy's Parma ham, to name but a few.
In Canada, some notable GI's are Ontario Icewine and Canadian Whisky, both known for distinctive flavours attributable to their geographic provenance.
2. What rights come from the registration of a GI?
A GI enables those who have the right to use the GI to prevent its use by third parties whose products do not conform to the GI standards. For example, Darjeeling tea was given GI status in India in 2003 and in the European Union in 2011. GI status led to products labelled as Darjeeling not from the district of Bengal being taken off the market.
3. For what types of products can GI's be protected in Canada?
Currently, Canadian law enables GI protection for wines, spirits, agricultural products and foodstuffs.
4. Who can request and use a GI in Canada?
In Canada, a GI can be requested and used by a group of producers of the product such as a cooperative, a consortium, or association that ensures the product fulfils certain requirements or standards which they have agreed upon, and in some cases, GI protection may be requested by a local government authority.
5. What is the difference between a trademark and a GI?
A geographical indication identifies a good as originating from a particular place. By contrast, a trademark identifies a good or service as originating from a particular source.
A trademark often consists of a fanciful or arbitrary sign. In contrast, a name used as a geographical indication is usually predetermined by the name of the geographic area where the goods are produced.
A trademark can be assigned or licensed to anyone, anywhere in the world, because it is linked to a specific source and not to a particular place. On the other hand, a GI may be used by any persons in the area of origin who produce the product according to the specified standards, but because of its link with the place of origin, a GI cannot be assigned or licensed to someone outside that place or not belonging to the group of authorized producers.
6. Is a GI the same as an indication of source?
No. An indication of source refers to a country or place of origin of a product but it does not attribute any special quality, reputation or characteristic of a product that is essentially attributable to its place of origin. Indications of source typically say on the product "made in ." or "product of .".
7. Can a GI become generic?
Yes, over time if it becomes the customary term for the product, it can become generic. For example, Camembert cheese has become generic and no longer functions as a GI.
Notably, a GI becoming generic in one country does not mean it is generic in another country.
8. How is a GI protected in Canada?
A request may be submitted to the Canadian Intellectual Property Office (CIPO) to have a GI entered on the list of protected GIs.
CIPO examines the request for compliance in cooperation with Agriculture and Agri-Food Canada. If the geographical indication meets the criteria to be entered on the list of protected GIs, the GI will be published in the CIPO Trademarks Journal to provide notice to third parties in the event they wish to oppose the GI. If no opposition is encountered within two months from publication, the Registrar of Trademarks enters the indication on the list of GIs. The term of protection is unlimited.
Click here for a list of the current geographical indications protected in Canada visit:
9. How are GI rights enforced in Canada?
An owner of a GI may initiate a court proceeding in Canada against a third party's unauthorized use.
In addition, with the coming into force of the Canada-United States-Mexico Agreement (CUSMA) on July 1, 2021, Canada Border Services Agency (CBSA) is now empowered to detain in-transit commercial shipments of suspected counterfeit goods travelling into Canada and destined for other countries.
Rights holders can record their protected geographical indications in a document titled Request for Assistance (RFA) to be filed with CBSA. Once the RFA is recorded, customs officials who detect inbound, outbound and in-transit commercial shipments suspected of containing counterfeit or pirated goods will contact the rights holder through their Canadian IP counsel and provide information regarding the shipment, including the nature and quantity of the suspected goods, photographs of the goods and identities and addresses of the importer and exporter.
The rights holder may commence an action against the importer and/or exporter resulting in the CBSA detaining the goods until the action is settled either by the parties or through the courts. Nearly 80% of actions are settled out of court and the goods are destroyed.
An RFA is good for two years, can be updated when changes occur, and can be reapplied for at the end of the term.
Further, the Food and Drugs Act (FDA) contains provisions against misleading labelling of products. A GI owner may file a complaint with the Canadian Food Inspection Agency (CFIA) as they enforce food labelling rules outlined in the FDA. A GI owner may file a complaint through CFIA's online form. The CFIA in turn conducts an investigation and takes administrative action.
10. Why are GIs relevant to business?
Consumers are paying more and more attention to the geographical origin of products and many care about specific characteristics present in the products they buy. In some cases, the "place of origin" suggests to consumers that the product will have a particular quality or characteristic that they may value. GIs function as product differentiators on the market by enabling consumers to distinguish between products with geographical origin-based characteristics and others without those characteristics. Geographical indications can thus be a key element in developing collective brands for quality-bound-to-origin products.
11. Why is it important to register and enforce GI rights?
Protecting a GI enables those who have the right to use the indication to take measures against others who use it without permission and benefit from its reputation. A geographical indication's reputation is a valuable asset. If not protected, it could be used without restriction, its value diminished as a result and potentially even eventually lost. In Canada, there have been examples of GI owners attempting to enforce their GIs against third-party use and registration but failing as a result of the fact that the GIs were not registered in Canada and that unrelated third parties had longstanding prior use.
Protecting a GI is also a way to prevent registration of the indication as a trademark by third parties and to limit the risk of the indication becoming a generic term.
In general, GIs, backed up by solid business management, can benefit the producers by:
- Providing them with a competitive advantage;
- Adding value to a product;
- Increasing export opportunities; and
- Strengthening the brand.
About Dentons
Dentons is the world's first polycentric global law firm. A top 20 firm on the Acritas 2015 Global Elite Brand Index, the Firm is committed to challenging the status quo in delivering consistent and uncompromising quality and value in new and inventive ways. Driven to provide clients a competitive edge, and connected to the communities where its clients want to do business, Dentons knows that understanding local cultures is crucial to successfully completing a deal, resolving a dispute or solving a business challenge. Now the world's largest law firm, Dentons' global team builds agile, tailored solutions to meet the local, national and global needs of private and public clients of any size in more than 125 locations serving 50-plus countries. www.dentons.com
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. Specific Questions relating to this article should be addressed directly to the author.
