Renseignements pour le réexamen au titre de l'article 24:2 de l'Accord sur les ADPIC (Liste de questions concernant les indications géographiques) ‒ Afficher les détails du document

Canada

Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.

See the answer to question 1 above.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

As described in the answer to question 1 above, general protection for geographical indications extends to both goods and services. Specific protection for wines and spirits does not.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

With respect to Article 22.2 of the TRIPS Agreement, please see the first part of the answer to question 1. With respect to Article 23.1 of the TRIPS Agreement, Section 11.14 and 11.15 of the Trade-marks Act prohibit the adoption or use of a protected geographical indication for a wine or a spirit, respectively. In those Sections, translations are specifically prohibited, and no exception is made for expressions such as "kind", "type", "style", "imitation" or the like.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

(Please refer to the answer to question 1 above). In a common law action for passing off, the plaintiff must prove that his or her goods or services have acquired a reputation or goodwill, that the defendant is trading on that reputation or goodwill, and that damages are being or will be suffered as a result. The relief in such actions is monetary damages and/or injunction. In an action based on Article 1457 of the Civil Code of Quebec, a plaintiff must prove the basic conditions of civil liability, i.e., fault, damage and causal connection. In this case, fault would consist of non-authorized use of reputation or goodwill and/or the use of reputation or goodwill to mislead the public on the origin of the product or service.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

The following domestic geographical indications have been entered on the list of geographical indications established under Section 11.12 of the Trade-marks Act: Geographical Indication File No. Date Entered on the List Canadian Rye Whisky 837046 19 December 1997 Canadian Whisky 824047 19 December 1997 Fraser Valley 837658 18 February 1998 Okanagan Valley 837655 18 February 1998 Similkameen Valley 837657 18 February 1998 Vancouver Island 837656 18 February 1998

Protection in accordance with Article 23.2 of the TRIPS Agreement is restricted to wines and spirits. See also the last part of the answer to question 1 above.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

See the answer to question 4 in Section I above.

[Answer 4: With respect to Article 22.2 of the TRIPS Agreement, please see the first part of the answer to question 1. With respect to Article 23.1 of the TRIPS Agreement, Section 11.14 and 11.15 of the Trade-marks Act prohibit the adoption or use of a protected geographical indication for a wine or a spirit, respectively. In those Sections, translations are specifically prohibited, and no exception is made for expressions such as "kind", "type", "style", "imitation" or the like.]

Geographical indications for wines and spirits are defined in Section 2 of the Trade-marks Act, which reads as follows: "geographical indication" means, in respect of a wine or spirit, an indication that: "(a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and "(b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to the WTO Member." Geographical indications for other goods or services are not defined in the Act.

It will depend on the nature of the link and whether the product meets the definition of geographical indication.

Applications for additions to the list of geographical indications will be examined for compliance with Section 11.12 and other provisions of the Trade-marks Act based on the following criteria: (a) The geographical indication must identify a wine or spirit originating in the territory of a WTO Member (including Canada), or a region or locality of that territory. (b) The geographical indication must be officially recognized and protected by the applicable laws in that WTO member. It is up to the applicant to provide evidence of this, including the effective date of recognition in the country of origin. It should be clear that the country of origin provides the legal means to prevent the misuse of the geographical indication in the application being submitted. (c) The responsible authority must demonstrate that, by reason of state or commercial interest, it is sufficiently connected with and knowledgeable of the wine or spirit to be party to any proceedings in respect of an objection filed under Subsection 11.13(1) of the Trade-marks Act. Responsible authorities may be national bodies as well as private enterprises or regional associations. (d) There must be a demonstration that there is a "quality, reputation or other characteristic of the wine or spirit that is essentially attributable to its geographical origin". This aspect of the review considers, among other things, the following principles: (i) As it concerns wines, the geographical indication: - is recognized as being linked to a quality or a characteristic of the product attributed to its geographic milieu, including natural or human factors; and - is allowed to be used only if the harvesting of the grapes took place in the country, region, place or area defined. (ii) As it concerns spirits, the geographical indication: - is recognized as being linked to a quality or a characteristic which the product acquires at the time of a decisive phase of its production; and - is allowed to be used only if the decisive phase takes place in the country, region, place or area defined.

This would depend on the individual geographical indication for which protection was sought. There is no requirement for human creativity in the Trade-marks Act.

As mentioned in the answer to question 1 above, protection for geographical indications in Canada is provided under the general "umbrella" of trademark law. There is no connection with patent law. In terms of defining the geographic area, it would be up to the responsible authority to satisfy the Registrar of Trade-marks that it had established rights to a given area.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

As mentioned in the answer to question 1 above, protection for geographical indications in Canada is provided under the general "umbrella" of trademark law. There is no connection with patent law. In terms of defining the geographic area, it would be up to the responsible authority to satisfy the Registrar of Trade-marks that it had established rights to a given area.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

No, it would be up to the responsible authority for each homonymous geographical indication to prove that it met the criteria set out in the definition of "geographical indication" in respect of a wine or spirit. (See the answer to question 8 above.)

[Answer 8: Geographical indications for wines and spirits are defined in Section 2 of the Trade-marks Act, which reads as follows: "geographical indication" means, in respect of a wine or spirit, an indication that: "(a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and "(b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to the WTO Member." Geographical indications for other goods or services are not defined in the Act.]

Protection is provided for geographical indications for wines and spirits for foreign countries. (See the answer to question 8 above.) For geographical indications for other goods or services from foreign countries, trademark protection would have to be obtained, or the requirements for an action under Section 7 of the Trade-marks Act, under Article 1457 of the Civil Code of Quebec, or under the common law tort of passing off would have to be met. (See answers to questions 1 and 5 above.)

[Answer 8: Geographical indications for wines and spirits are defined in Section 2 of the Trade-marks Act, which reads as follows: "geographical indication" means, in respect of a wine or spirit, an indication that: "(a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and "(b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to the WTO Member." Geographical indications for other goods or services are not defined in the Act.]

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

[Answer 5: (Please refer to the answer to question 1 above). In a common law action for passing off, the plaintiff must prove that his or her goods or services have acquired a reputation or goodwill, that the defendant is trading on that reputation or goodwill, and that damages are being or will be suffered as a result. The relief in such actions is monetary damages and/or injunction. In an action based on Article 1457 of the Civil Code of Quebec, a plaintiff must prove the basic conditions of civil liability, i.e., fault, damage and causal connection. In this case, fault would consist of non-authorized use of reputation or goodwill and/or the use of reputation or goodwill to mislead the public on the origin of the product or service.]

With respect to geographical indications for wines and spirits, paragraph b) of the definition requires that they be protected by the laws of the WTO Member country of origin. (See the answer to question 8 above.)

[Answer 8: Geographical indications for wines and spirits are defined in Section 2 of the Trade-marks Act, which reads as follows: "geographical indication" means, in respect of a wine or spirit, an indication that: "(a) identifies the wine or spirit as originating in the territory of a WTO Member, or a region or locality of that territory, where a quality, reputation or other characteristic of the wine or spirit is essentially attributable to its geographical origin; and "(b) except in the case of an indication identifying a wine or spirit originating in Canada, is protected by the laws applicable to the WTO Member." Geographical indications for other goods or services are not defined in the Act.]

The term "geographical indication" is defined in Section 2 of the Trade-marks Act and addressed in Sections 11.11 to 11.2; paragraph 12 1)g) and h); and Subsection 20(2) of the Act. The terms "appellations of origin" and "indications of source" are not legal terms in Canada and are not referred to in the TRIPS Agreement.

See the answer to question 14 in Section I above.

[Answer 14: No, it would be up to the responsible authority for each homonymous geographical indication to prove that it met the criteria set out in the definition of "geographical indication" in respect of a wine or spirit. (See the answer to question 8 above.)]

The responsible authority need not be a governmental organization and may be a private entity. In either case, the onus would be upon it to satisfy the Registrar of Trade-marks that it was authorized to control the geographical indication.

The responsible authority need not be a governmental organization and may be a private entity. In either case, the onus would be upon it to satisfy the Registrar of Trade-marks that it was authorized to control the geographical indication.

The procedures are not ex officio but must be initiated by the responsible authority.

An application fee of Can$450.00 is payable for each geographical indication submitted. (Note: Information pertaining to the "Process for the Protection of Geographical Indications for Wines and Spirits in Canada" can be found at the following address on the Internet: http://www.agr.ca/cb/news/n60730de.html.)

See the answer to question 10 above.

[Answer 10: Applications for additions to the list of geographical indications will be examined for compliance with Section 11.12 and other provisions of the Trade-marks Act based on the following criteria: (a) The geographical indication must identify a wine or spirit originating in the territory of a WTO Member (including Canada), or a region or locality of that territory. (b) The geographical indication must be officially recognized and protected by the applicable laws in that WTO member. It is up to the applicant to provide evidence of this, including the effective date of recognition in the country of origin. It should be clear that the country of origin provides the legal means to prevent the misuse of the geographical indication in the application being submitted. (c) The responsible authority must demonstrate that, by reason of state or commercial interest, it is sufficiently connected with and knowledgeable of the wine or spirit to be party to any proceedings in respect of an objection filed under Subsection 11.13(1) of the Trade-marks Act. Responsible authorities may be national bodies as well as private enterprises or regional associations. (d) There must be a demonstration that there is a "quality, reputation or other characteristic of the wine or spirit that is essentially attributable to its geographical origin". This aspect of the review considers, among other things, the following principles: (i) As it concerns wines, the geographical indication: - is recognized as being linked to a quality or a characteristic of the product attributed to its geographic milieu, including natural or human factors; and - is allowed to be used only if the harvesting of the grapes took place in the country, region, place or area defined. (ii) As it concerns spirits, the geographical indication: - is recognized as being linked to a quality or a characteristic which the product acquires at the time of a decisive phase of its production; and - is allowed to be used only if the decisive phase takes place in the country, region, place or area defined.]

See the answer to question 10 above. The following information must be supplied: - the indication to be protected; - whether the indication identifies a wine or spirit; - country of origin; - description of territory, region and/or locality in which the wine or spirit is identified as originating; - name of responsible authority, with description of the state or commercial responsibility, interest and knowledge in relation to the wine or spirit; - address of responsible authority (foreign address optional); - Canadian mailing name/address if responsible authority is outside Canada (representative for service); - date of official recognition in country of origin; - evidence of quality, reputation, or other characteristics that qualifies indication as a geographical indication. This should include details of the standards or regulations in the country of origin guaranteeing the authenticity of the wine or spirit and identifying who has the right to use the geographical indication. This statement should be signed by an official or agent or solicitor of the responsible authority and may include, as annexes, extracts from laws, regulations or even descriptions thereof contained in wine or spirit encyclopaedias or other authoritative publications, if in the opinion of the responsible authority, the description is accurate; and - a statement by the responsible authority that, to the best of its knowledge and belief: • the laws, regulations or administrative practices in the country of origin provide the legal means to prevent the unauthorized use of the geographical indication and that, in fact, the laws, regulations or administrative practices are enforced in the country of origin; and • the requirements for the protection of the geographical indication in the country of origin are equivalent to the requirements of Articles 23 and 24 for the TRIPS Agreement.

[Answer 10: Applications for additions to the list of geographical indications will be examined for compliance with Section 11.12 and other provisions of the Trade-marks Act based on the following criteria: (a) The geographical indication must identify a wine or spirit originating in the territory of a WTO Member (including Canada), or a region or locality of that territory. (b) The geographical indication must be officially recognized and protected by the applicable laws in that WTO member. It is up to the applicant to provide evidence of this, including the effective date of recognition in the country of origin. It should be clear that the country of origin provides the legal means to prevent the misuse of the geographical indication in the application being submitted. (c) The responsible authority must demonstrate that, by reason of state or commercial interest, it is sufficiently connected with and knowledgeable of the wine or spirit to be party to any proceedings in respect of an objection filed under Subsection 11.13(1) of the Trade-marks Act. Responsible authorities may be national bodies as well as private enterprises or regional associations. (d) There must be a demonstration that there is a "quality, reputation or other characteristic of the wine or spirit that is essentially attributable to its geographical origin". This aspect of the review considers, among other things, the following principles: (i) As it concerns wines, the geographical indication: - is recognized as being linked to a quality or a characteristic of the product attributed to its geographic milieu, including natural or human factors; and - is allowed to be used only if the harvesting of the grapes took place in the country, region, place or area defined. (ii) As it concerns spirits, the geographical indication: - is recognized as being linked to a quality or a characteristic which the product acquires at the time of a decisive phase of its production; and - is allowed to be used only if the decisive phase takes place in the country, region, place or area defined.]

The following information must be supplied: - the indication to be protected; - whether the indication identifies a wine or spirit; - country of origin; - description of territory, region and/or locality in which the wine or spirit is identified as originating; - name of responsible authority, with description of the state or commercial responsibility, interest and knowledge in relation to the wine or spirit; - address of responsible authority (foreign address optional); - Canadian mailing name/address if responsible authority is outside Canada (representative for service); - date of official recognition in country of origin; - evidence of quality, reputation, or other characteristics that qualifies indication as a geographical indication. This should include details of the standards or regulations in the country of origin guaranteeing the authenticity of the wine or spirit and identifying who has the right to use the geographical indication. This statement should be signed by an official or agent or solicitor of the responsible authority and may include, as annexes, extracts from laws, regulations or even descriptions thereof contained in wine or spirit encyclopaedias or other authoritative publications, if in the opinion of the responsible authority, the description is accurate; and - a statement by the responsible authority that, to the best of its knowledge and belief: • the laws, regulations or administrative practices in the country of origin provide the legal means to prevent the unauthorized use of the geographical indication and that, in fact, the laws, regulations or administrative practices are enforced in the country of origin; and • the requirements for the protection of the geographical indication in the country of origin are equivalent to the requirements of Articles 23 and 24 for the TRIPS Agreement.

The following information must be supplied: - the indication to be protected; - whether the indication identifies a wine or spirit; - country of origin; - description of territory, region and/or locality in which the wine or spirit is identified as originating; - name of responsible authority, with description of the state or commercial responsibility, interest and knowledge in relation to the wine or spirit; - address of responsible authority (foreign address optional); - Canadian mailing name/address if responsible authority is outside Canada (representative for service); - date of official recognition in country of origin; - evidence of quality, reputation, or other characteristics that qualifies indication as a geographical indication. This should include details of the standards or regulations in the country of origin guaranteeing the authenticity of the wine or spirit and identifying who has the right to use the geographical indication. This statement should be signed by an official or agent or solicitor of the responsible authority and may include, as annexes, extracts from laws, regulations or even descriptions thereof contained in wine or spirit encyclopaedias or other authoritative publications, if in the opinion of the responsible authority, the description is accurate; and - a statement by the responsible authority that, to the best of its knowledge and belief: • the laws, regulations or administrative practices in the country of origin provide the legal means to prevent the unauthorized use of the geographical indication and that, in fact, the laws, regulations or administrative practices are enforced in the country of origin; and • the requirements for the protection of the geographical indication in the country of origin are equivalent to the requirements of Articles 23 and 24 for the TRIPS Agreement.

The procedure is set out in Section 11.13 of the Trade-marks Act.

As set out in Subs. 11.13(1) of the Trade-marks Act, "any person interested", upon payment of the prescribed fee and following the procedures of the Section, may object to the protection of the geographical indication.

The procedure for obtaining protection is set out in Section 11.12 of the Trade-marks Act.

Protection continues indefinitely. No renewal or reaffirmation is required

Protection continues indefinitely. No renewal or reaffirmation is required

Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.

There is no specified time-limit. The test is whether the geographical indication has "fallen into disuse". (See the answer to question 30 above.)

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

Once a geographical indication is added to the protected list, its use would be under the control of the responsible authority that requested protection.

These matters are determined by the responsible authority. There are no fees imposed by the government in respect of these matters.

These matters are determined by the responsible authority. There are no fees imposed by the government in respect of these matters.

It would be up to the responsible authority to "police" the use of the geographical indication by unauthorized third parties and to bring an action in the courts to prevent that use. The traditional remedies for the violation of intellectual property rights in Canada are monetary damages and/or injunction.

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

See the answer to question 30 above

[Answer 30: Subsection 11.18(1) of the Trade-marks Act provides that protection may lapse if the geographical indication ceases to be protected by the laws applicable in the WTO Member country of origin or has fallen into disuse in that Member. Such matters would not normally be monitored by the Registrar of Trade-marks. Rather, an interested person would normally present evidence to this effect in the context of an application for registration of a trademark that includes the geographical indication in some way. The Registrar, in examining and allowing such applications, follows the rules of natural justice, which would include notifying the responsible authority of the application and allowing the latter to be heard.]

The Trade-marks Act is silent on the subject of licences for geographical indications, which means there is nothing in the Act that prevents licensing.

This use is addressed in Section 11.17 of the Trade-marks Act.

This is addressed at Section 11.2 of the Trade-marks Act.

There is no conflict between the Canadian regime for protecting geographical indications and the obligations of Article 16.2 and 16.3 of the TRIPS Agreement.

Under paragraph 12 1)g) and h) of the Trade-marks Act, a trademark is not registrable if it consists - in whole or in part - of a protected geographical indication, where the trademark is to be registered in association with a wine or spirit not originating in the territory indicated by the geographical indication. Section 18 of the Trade-marks Act provides that a trademark is invalid when certain criteria are met.

See the answer to question 46 in Section I above.

[Answer 46: Under paragraph 12 1)g) and h) of the Trade-marks Act, a trademark is not registrable if it consists - in whole or in part - of a protected geographical indication, where the trademark is to be registered in association with a wine or spirit not originating in the territory indicated by the geographical indication. Section 18 of the Trade-marks Act provides that a trademark is invalid when certain criteria are met.]

Geographical indications may be enforced by the responsible authority through an action in the ordinary courts. The normal relief in actions for the violation of intellectual property rights is monetary damages or injunction. (See Canada's answers to the Checklist of Issues on Enforcement 2 for greater detail.)

See the answer to question 47 above.

[Answer 47: Geographical indications may be enforced by the responsible authority through an action in the ordinary courts. The normal relief in actions for the violation of intellectual property rights is monetary damages or injunction. (See Canada's answers to the Checklist of Issues on Enforcement 2 for greater detail.)]

The fees to commence an action in the superior court of each province are as follows: British Columbia: Can$208.00; Alberta: Can$200.00; Saskatchewan: Can$75.00; Manitoba: Can$120.00; Ontario: Can$132.00; Quebec: Fee dependent upon amount involved on the face the proceedings: if filed by a corporation (personne morale), if between Can $ 10,000.00 and Can$100,000.00, the fee is Can$174.00. If between Can$100,000.00 and Can$1 million, the fee is Can$275.00. If Can$1 million or over, the fee is Can$545.00; New Brunswick: Can$100.00 (NB. legislation is currently being revised and new regulations come into force on 1 January 1999); Prince Edward Island: Can$56.00 if filed by a lawyer or Can$50.00 if filed by a layperson; Nova Scotia: Can$150.00 Newfoundland: Can$63.00 Federal Court Trial Division: Fee dependent upon amount involved on the face of the proceedings: if less than Can$5000.00, the fee is Can$20.00. If between Can$5000.00 and Can$50,000.00, the fee is Can$50.00. If over Can$50,000, the fee is Can$150.00. However, if the action is against the Crown, the filing fee is reduced to only Can$2.00 regardless of the amount involved. (See Canada's answers to the Checklist of Issues on Enforcement 2 for greater detail).

The procedure is contained in Section 11.12 of the Trade-marks Act.

There is no criminal sanction for the unauthorized use of a geographical indication.

Canada is a party to the North American Free Trade Agreement (NAFTA). NAFTA, Article 1712 addresses geographical indications. The provisions of that Article are not inconsistent with Articles 22 through 24 of the TRIPS Agreement and are met by Sections 11.11 through 11.2; paragraph 12 1)g) and h); Subsection 20(2); and the definition of a "geographical indication" contained in Section 2 of the Trade-marks Act, as well as by the legal means described in the answer to question 1 above.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]

Canada is a party to the North American Free Trade Agreement (NAFTA). NAFTA, Article 1712 addresses geographical indications. The provisions of that Article are not inconsistent with Articles 22 through 24 of the TRIPS Agreement and are met by Sections 11.11 through 11.2; paragraph 12 1)g) and h); Subsection 20(2); and the definition of a "geographical indication" contained in Section 2 of the Trade-marks Act, as well as by the legal means described in the answer to question 1 above.

[Answer 1: Geographical indications may be protected through a number of different means. For goods and services in general, protection is provided in the common law provinces through the common law of passing off; in Quebec, under Article 1457 of the Civil Code of Quebec. In addition, paragraph 7 d)i) of the Trade-marks Act prohibits making use, in association with wares or services, of any description that is false in a material respect and likely to mislead the public as to ... the geographical origin ... of the wares or services. Also, the owner of rights in such geographical indications may apply for protection, as a registered trademark, if the requirements of the Act are met. For wines and spirits, specific provisions are contained in Section 11.11 through 11.2; paragraphs 12 1)g) and h); Subs. 20(2); and the definition of "geographical indication" contained in Section 2 of the Trade-marks Act. These provisions enable a responsible authority to request that a geographical indication be placed on a protected list.]