When Can a Mark be Protected as a Geographical Indication?
A decision of the General Court of the European Union raises some interesting considerations concerning protecting a geographical indication. A Geographical Indication relates to food, drink, and agricultural products with a geographical connection or that are made using traditional methods which can be protected as a trademark to, in effect, guarantee the product's characteristics or reputation, authenticity and origin.
The trademark EMMENTALER is protected as a geographical indication in Switzerland. However, it has been a contentious issue whether the designation should be protected in the European Union.
Emmentaler Switzerland applied for the protection of its designation in the European Union in association with cheeses with the protected designation of origin “Emmentaler”. The examiner rejected the application and Emmentaler Switzerland appealed to the Board of Appeal, who dismissed the appeal. They then appealed to the General Court of the European Union.
The General Court
The Court noted that protection for geographical indications is not available for signs which are an indication of the kind, quality, quantity, and intended purpose, value, time of production or other characteristics of the goods in question but is only available for signs which are an indication of the geographical origin of the goods. Emmentaler Switzerland v. EUIPO (General Court (Tenth Chamber) 24 May 2023.
The court found that the word EMMENTALER would be understood by the relevant public in Germany as a generic type of cheese not a specific Swiss cheese. This finding was supported by dictionary definitions, the substantial production of Emmentaler cheese in Germany and other matters.
Because of this finding the applied for mark was descriptive of the goods applied for and not registrable.
The Canadian Position
In Canada a “geographical indication” means an indication that identifies a wine or spirit, or an agricultural product or food of the category set out in the schedule to the Act as originating in a territory of a WTO Member, or a region or locality of that territory, if a quality, reputation or other characteristic of the a wine or spirit or the agricultural product or food is essentially attributable to its geographical origin.
An application can be made to protect a geographical indication in Canada for a wine or spirit or an agricultural product or food which has the essential geographical origin as described above. The application is reviewed by CIPO. If it meets the relevant criteria CIPO will recommend that the responsible Minister publish a statement proposing that the indication be entered on the list of geographical indications.
When an application is published it is possible to object to the indication within two months after its publication. The objection process is like an opposition of a regular trademark although the grounds of objection are somewhat different. A statement of objection may be based on the grounds that when the statement by the Minister was published:
(a) the indication was not a geographical indication;
(b) the indication is identical to a term customary in common language in Canada as the common name for the wine or spirit or the agricultural product or food;
(d) in the case of an indication identifying an agricultural product or food, the indication was confusing with
(i) a registered trademark,
(ii) a trademark previously used in Canada and that has not been abandoned, or
(iii) a trademark in respect of which an application for registration was previously filed in Canada and remains pending.
In objection proceedings relating to a geographical indication and for determining whether an indication is confusing with a trademark a new definition of “confusion” has been added to the Act. The definition is similar to the existing definition but does not include the words “whether or not the goods or services are of the same general class”.
The decision usefully reviews the issues relevant to the availability of a geographical indication and the type of evidence that may be considered.
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These comments are of a general nature and not intended to provide legal advice as individual situations will differ and should be discussed with a lawyer.
A version of this article originally appeared in the Law360 Canada published by LexisNexis Canada Inc.