97. The representative of Canada said that, with respect to the second sub-question, the Canadian system made a distinction between trademarks and geographical indications regarding the process for the protection of a term.
98. With regard to trademarks, under Section 12(1)(c) of the Trade-marks Act, a term was not registrable as a trade trademark if it was the name in any language of any of the wares or services in connection with which it was used or proposed to be used. During the examination phase, the burden of proof was on the Industrial Property Office to establish, on the balance of probabilities, that an application was not registrable for this reason. In opposition proceedings, the decision whether to refuse an application on that ground would be based upon the evidence supplied. Typically there would be an initial burden upon the opponent to fill some pertinent evidence but once that was satisfied the legal burden would lie on the applicant to establish on the balance of probabilities that the trademark was registrable.
99. With regard to geographical indications, to obtain protection for GIs for wines or spirits, the burden was on the person seeking GI protection to establish that the term in question was a geographical indication within the meaning of Section 2 of the Trade-marks Act to the satisfaction of the Minister, as required under Section 11.12(3). The definition under Section 2 required that the term fit the definition under Article 22 of the TRIPS Agreement and that the term be protected in the country of origin. Arguably, a term that was generic would not fulfil the requirements of Section 2 and would therefore not qualify as a geographical indication. If the issue was raised, the person seeking GI protection would have to show that the term was in fact not generic. If the Minister was satisfied that the term was a geographical indication and published the term together with the required information in the Canada Gazette, a three-month objection period started during which any interested person could file a statement of objection on the sole ground that the term was not a geographical indication. In that case, the burden to show that a geographical indication was generic shifted to the person who raised the objection.
100. With respect to challenging a protected term, under the Trade-marks Act, once the trademark was registered in Canada, its validity might be challenged under Section 18 of the Trade-marks Act. That might occur as a counter claim to an infringement action or as an originating notice of motion. The validity of a registered trademark could be challenged on four possible grounds, two of which touched on the issue of genericness. Those grounds might be invoked by any interested person that was defined in Section 2 of the Trade-marks Act as including any person who was affected or reasonably apprehended that he might be affected by any entry in the register or by any act or omission or contemplated act or omission under the Trade-marks Act. That included the Attorney-General of Canada. A registered trademark was presumed to be valid, thus the onus was on the interested person to prove that the trademark was invalid on the predominance of evidence basis. The first ground stated that the registered trademark was invalid if it was not registrable at the date of registration. Section 12(1) listed the relative grounds of refusal that determined when a trademark was not registrable, which included the name in any language of any of the wares or services in connection with which it was used or proposed to be used. If a trademark was found to be the name of the ware itself or generic, then the mark was not registrable at the time it was registered and could be declared invalid. The second ground was that the trademark was not distinctive at the time of the court proceedings. Thus, even if the trademark was registerable at the time it was examined and registered, that ground allowed for the possibility for the trademark over time to become no longer distinctive of the wares and services listed in the registration. Arguably, a trademark that had become generic would have lost its distinctiveness. The grounds on which a mark could be challenged under Section 18 of the Trade-marks Act also applied to certification marks.
101. Turning to geographical indications, she said that Section 11.18(2) of the Trade-marks Act gave an exception for the use of customary names. If a protected geographical indication was in fact identical with a term customary in common language in Canada, as a common name for the wine or spirit or a customary name of a grape variety existing in Canada, then the adoption, use or registration of that geographical indication as a trademark or otherwise in connection with the business in respect of a wine or spirit would be allowed. If the adoption, use or registration was challenged it was up to the person alleging that the protected geographical indication was a customary name to prove that.
