Meeting of Committee on Geographical indications

July 6, 2022 (by Video-conference)

Report

The fourth meeting of the Committee on Geographical Indications (GIs) established under CETA took place on 6 July 2022 by video conference. Canada and the EU engaged in an in-depth discussion of issues related to the CETA provisions on GIs for agricultural products and foods, as well as other issues related to GIs.

The EU reiterated the importance of effective administrative enforcement for GIs in Canada, and expressed concern with the outcome of the Canadian Food Inspection Agency’s (CFIA) assessment in respect of a complaint by an EU rights holder concerning the use of “Italiano” on various cheese products produced in Canada, where the use was found to not be false or misleading, and did not create an erroneous impression with respect to origin. The EU inquired why this decision by the CFIA appeared to be inconsistent with a previous decision taken by the Canadian Intellectual Property Office (CIPO) to refuse the registration of a trademark in Canada that made use of “Italian”.

Canada provided a detailed explanation that assessments and decisions by CFIA inspectors and CIPO trademark examiners are taken under distinct legislative and regulatory regimes and with separate considerations that are conceptually incommensurate (intellectual property relating to rights versus labelling requirements relating to consumer protection and safety). In the case of CFIA, Canada indicated that CFIA inspectors responded in writing with a detailed outline of the reasons why the labels in question were not found to be false and misleading, noting that the assessment under food labelling legislation reviews the entire label, overall impression, and all of its elements rather than a single indication to determine whether that label as a whole is false or misleading. With respect to CIPO, a trademark examiner only looks at the mark itself, and assessed against a variety of factors in the Trademarks Act, but only with respect to that trademark. The outcome of the “Italiano” case was viewed as unsatisfactory by the EU, which expressed  concern that, on top of other outcomes in recent years, it would be discouraging for other EU GI rights holders to file labelling complaints with CFIA, as suggested by Canada.

The EU once again underscored the importance of its request for Canada to create a list of grandfathered users of certain names protected under CETA in the Canadian marketplace. Canada repeated that there is no obligation in CETA to develop a list of grandfathered prior users. However, following a commitment from the 2021 CETA Joint Committee to raise awareness among Canadian stakeholders of the CETA GI obligations, Canada reported that on February 11, 2021 they had briefed all provinces and territories on this issue, including on grandfathering and offered further meetings to address any follow up questions. Canada also advised that they are in the process of developing content that would be presented on Global Affairs Canada’s webpage to inform stakeholders of the CETA GI obligations and enforcement in the Canadian market. The EU welcomed this initiative and offered to assist Canada by contributing to the web content.

With respect to the corrigenda concerning certain EU GIs listed in Annex 20-A of CETA, the EU advised that they were in the process of clarifying certain internal EU procedural elements. Canada informed the EU that they are prepared to make the changes domestically and that the only outstanding item is a date from the EU on when the corrected text of CETA would take effect in the EU.

Other GI related issues were discussed, that were not directly related to the obligations of CETA:

• Canada provided an update on the process to request GI protection in Canada through direct application with CIPO. As a matter of best practice, it is important for EU GI rights holders to ensure that there are sufficient funds when paying through wire transfers to account for financial institutions deducting service fees from the transaction. Canada also updated the Committee on CIPO’s ability to engage with electronic communication, as it is now possible to provide a response to a request from CIPO for additional information related to a GI application by way of CIPO e-correspondence.
• The EU provided an update on the continuing infringement proceedings related to Danish dairy exports, including the Court of Justice of the European Union Advocate General’s Opinion concerning Denmark’s failure to adequately fulfil its obligations under the EU law on quality schemes for agricultural products and foodstuffs in relation to “feta”.
• At Canada’s request, the EU provided an update on the proposed amendments concerning Regulation of the European Parliament and of the Council of European Union on geographical indications for wine, spirit drinks and agricultural products, as well as the April 13, 2021 proposal for a regulation on information regarding the protection of craft and industrial products at the EU level.
• Canada also inquired about the standing of “country authorities” and “competent bodies” in the EU GI database, GIview. Canada explained that understanding these entries would assist in identifying who would be the equivalent “responsible authority” in Canada for the CETA GIs.  With respect to next steps, Canada committed to provide a list for the European Commission to review what might constitute a responsible authority in Canada for each CETA GI. Additionally, the EU invited Canada to a training session on GIview and advised that the training is necessary for Canadian entities responsible for Canada’s GIs to be granted access to the database.
• The EU provided Canada with an update on its negotiations with Australia, New Zealand, Indonesia, and India, and Canada updated the EU on the progress of its negotiations with India.  
• The EU requested Canada’s current position on the protection of GIs in the domain name space and inquired whether a GI rights holder can challenge a “bad faith” registration under the .ca domain. Canada explained that it is currently engaging on the study and implications of this very question in multilateral fora and is still in the process of examining the issue but that further study is required. With respect to challenging bad faith registrations of GIs, Canada indicated that it is possible to challenge on the basis of bad faith under the Canadian Internet Registration Authority’s policy.

Canada and the EU concluded that it would be helpful to work together on raising awareness around the CETA GI obligations and reiterated their shared commitment to continue to cooperate and to achieve progress in a number of areas.

Participants:

European Union:
Co-Chair: European Commission, Directorate General for Agriculture and Rural Development, Deputy Head of Unit G2 (The Americas)
European Commission, Directorate General for Agriculture and Rural Development
European Commission, Directorate General for Trade
Delegation of the European Union to Canada

Canada:
Co-Chair: Global Affairs Canada, Director, Intellectual Property Trade Policy Division
Global Affairs Canada
Innovation, Science and Economic Development Canada
Agriculture and Agri-Food Canada
Canadian Food Inspection Agency
Canadian Intellectual Property Office
Mission of Canada to the European Union