After stumbling near the finish line, Canada and the EU were finally able to sign the Comprehensive Economic and Trade Agreement (CETA) on October 30, 2016.  Bill C-30 (the CETA Implementation Act) was tabled the following day, on October 31, 2016.

CETA brings significant changes to Canada’s trademark and patent laws.  On the trademark front, the most significant change is the recognition of geographic indications that extend beyond wines and spirits, to cover agricultural products and foods.

Once these changes are in effect, the use and registration of words that are protected as a geographic indicator (GI) will be prohibited.  A common example would be Parmigiano Reggiano.  There are certain exceptions that will permit the continued use of words like “Feta” and “Asiago”, if they were used for an extended 10 year period.

For further information, please contact Paula Clancy.

The simple and prudent answer is ‘no’.  A trademark is not registrable if it is clearly descriptive, or deceptively misdescriptive of the place of origin of the goods associated with the mark.

The Canadian Trademarks Office recently issued a new practice notice clarifying its practice with respect to marks that describe a place of origin.  This practice notice was issued in response to the Federal Court of Appeal decision in MC Imports Inc. v. AFOD Ltd. [2016 FCA 60].

Specifically,

1. A trademark will be found to be “clearly descriptive of the place of origin” if the trademark is a geographic name and the associated goods originate from that geographic location.
2. A trademark may be misdescriptive if it consists of a geographic name and the associated goods do not emanate from that geographic location.  Whether the mark is deceptively misdescriptive, contrary to s.12(1)(b) of the Trademarks Act, will depend on whether Canadian consumers could be misled into thinking that the associated goods actually originated from that geographic location.
3. If Canadian consumers would view the primary or predominant meaning of the trademark as the geographic name, then a trademark will be deemed to consist of a geographic name, notwithstanding that it could have other meanings.

For further information, please contact Paula Clancy

The Quebec government introduced amendments to the Charter of the French Language that will come into force on November 24, 2016.  As a result, all Quebec businesses will now be required to add French words to their non-French trademarks on all outdoor signage.  This means that retailers like WALMART or BEST BUY will now need to include on their signage a French descriptor outlining the nature of the business, or a slogan.

Businesses will have 3 years to comply with respect to existing signage, but the changes apply immediately to all new signage. 

For additional information, please contact Paula Clancy.