Fine wine and great food are welcome at any party, but do you ever find yourself wondering whether your host is serving CHAMPAGNE or sparkling wine? ROQUEFORT or blue cheese? PROSCIUTTO DI PARMA or cured ham? Or maybe you're asking yourself right now, what’s the difference? The answer lies in the world of geographical indications (“GIs”).
A GI is used on goods that have a specific geographical origin and possess qualities or a reputation attributable to that place of origin. For example, ROQUEFORT is a type of blue cheese made from sheep’s milk and aged in the natural Combalou caves of Roquefort-sur-Soulzon, France. Similar cheeses are made elsewhere, but because they are not produced under these same conditions, they are not true ROQUEFORT.
GIs function in a manner similar to trademarks because they: 1) allow consumers to distinguish the protected products from others, 2) provide a guarantee of quality, and 3) can generate valuable goodwill. Unlike trademarks, however, GIs are not owned by a single entity; rather, they are typically owned by an organization or body of producers in a particular region.
Historically, protection for GIs was determined by individual governments and could vary significantly from country to country. As international trade increased, so did the importance of harmonizing GI protection. The first significant step toward harmonization was the conclusion of the TRIPS Agreement in 1994. TRIPS is administered by the World Trade Organization and ratification of TRIPS is compulsory for WTO membership, which is currently at over 150 countries. TRIPS sets minimum standards of protection for many forms of intellectual property, including GIs, that each country must meet or exceed. The basic level of GI protection in TRIPS, applying to all products, requires countries to provide legal means for protecting GIs to avoid misleading the public and to prevent unfair competition. A higher level of GI protection in TRIPS, applying only to wines and spirits, requires that there also be a legal means for protecting GIs for wines and spirits, even where misuse of the GI would not cause the public to be misled. In some cases, geographical indications do not have to be protected or the protection can be limited. This includes when a name has become the generic (or common) term for the product, or when the GI has already been registered by a third party as a trademark. For example, cheddar cannot be protected as a GI because it is now the generic name for a particular type of cheese and does not necessarily refer to a cheese made in Cheddar, UK. Another example is PARMA, which is both a GI for ham from Parma, Italy, and a registered Canadian trademark owned by Maple Leaf Foods Inc. for use in association with meats, including ham. The trademark registration prevents protection of the GI in Canada, much to the dismay of Italian producers.
As a result of TRIPS, Canada amended the Trademarks Act in 1996 to create special protection for GIs identifying wines and spirits. These amendments provide GIs with greater rights than a traditional Canadian trademark would offer. Unlike a trademark, a GI can only be opposed by a third party on the ground it is not in fact a GI. This eliminates traditional grounds of opposition such as confusion with a previously registered trademark. Furthermore, it is prohibited to adopt, use or register a trademark for wines or spirits that contains a GI (unless, of course, the product is legitimately from the territory indicated by the GI). For example, the trademark CACTUS JOE’S CANADIAN TEQUILA-STYLE LIQUOR would be prohibited because TEQUILA is a GI. As noted above, for GIs identifying wines and spirits, it doesn't matter that the public is unlikely to be misled into believing the product is from Tequila, Mexico.
Under the Canadian Trademarks Act, registration as a GI itself is only available for wines or spirits. However, non-wine or spirit GIs can still be protected. It is Canada’s position that the basic level of protection required for other GIs is already available under existing trademark law, typically by obtaining a certification mark. Certification marks identify goods or services that meet a defined standard, such as place of origin, method of manufacture, or that labour was provided by a member of a particular union or organization. For example, IDAHO is a GI for potatoes and is one of several registered Canadian certification marks owned by the State of Idaho. The United States and Australia take an approach similar to Canada, except that they require all GIs to qualify for protection under their existing national trademark laws. In contrast, Europe provides a system of GI protection outside of traditional trademark law covering wines, spirits and other food products, such as meat and cheese. These different approaches have led to a heated debate. Key areas of disagreement are: whether TRIPS should be amended to extend the higher level of protection given to wines and spirits to other products (and also potentially to non-food products, such as PERSIAN rugs), whether GI protection should be available in a country where the GI has become the generic term, and whether GI protection should be available when a third party already owns a trademark registration for the same term. Europe strongly supports broadening the protections for GIs, arguably because it has the vast majority of GIs and the most to gain. In contrast, Canada, the United States and Australia oppose the changes for several reasons. One is the argument that current trademark law is sufficient to protect GIs. Another is that Europe’s proposal would “claw back” protection for GIs that have become generic in a country (such as FETA and CHEDDAR in Canada), thereby causing substantial loss to producers who would be prevented from describing their product in a manner familiar to the public.
One GI with a complex history in Canada is CHAMPAGNE. In 1933, Canada and France entered into a treaty to protect GIs nominated by the respective countries. One of the terms included by France was CHAMPAGNE. This posed a problem, as the term CANADIAN CHAMPAGNE had been used on sparkling wine made in Canada since 1927. No action was taken under the treaty to stop such use until the Institut National des Appellations d’Origine des Vins et Eaux-de-Vie (“INAO”) launched a court case in 1968. This ultimately led to an injunction from the Superior Court of Quebec in 1976 preventing use of the term CANADIAN CHAMPAGNE on sparkling wine not originating from the Champagne region of France. In 1978, under pressure from Canadian vintners, Canada withdrew from the treaty. After withdrawal from the treaty, vintners in Ontario promptly resumed use of CANADIAN CHAMPAGNE. (By this time the use of CHAMPAGNE for sparkling wines made in Canada was prohibited in Quebec by the Societé des Alcools du Québec, the Quebec provincial regulator of alcoholic beverages. That prohibition remains in force today.) When the INAO tried to enforce their GI in Ontario without the protection of the treaty, they were unsuccessful. After ten years of litigation, the Ontario Court of Appeal held in 1987 that the term CHAMPAGNE alone was prohibited for sparking wine from Canada, but the term CANADIAN CHAMPAGNE did not create any confusion and was permitted. At present, the Canadian Trademarks Act includes CHAMPAGNE in a list of wine and spirit names excluded from GI protection. However, the story does not end there. In a few years CHAMPAGNE will once again be protected. Canada and the EU reached an agreement in 2003 to remove 23 wine and spirit names (including CHAMPAGNE) from the list of excluded names in the Trademarks Act. Those names will then be added to the Food and Drugs Act, which effectively means they cannot be used by anyone in Canada on wine and spirit labels other than legitimate sellers whose goods originate from the region protected by the GI. In return, the EU agreed to protect the term RYE WHISKEY and to relieve Canada of certain regulatory hurdles to selling ICE WINE in the EU. The agreement takes effect in stages, with CHAMPAGNE being removed from the list of excluded names on December 31, 2013.
The global harmonization of minimum standards for GI protection has come a long way, though how those standards are implemented is far from uniform. Whatever the legal framework in place, a properly controlled and enforced GI can be a powerful marketing tool that allows producers to profit from the fame and reputation of their distinct region. Looking forward, the current international debate over the future of GI protection is unlikely to be resolved in the near future, so in the meantime, pop a cork and enjoy some bubbly, regardless of the name.