On December 31st, while many readers (and writers!) of the Canadian Trademark Blog were likely raising a glass to celebrate the New Year, long-awaited amendments to the Canadian Trade-marks Act quietly came into force.  The changes pertain to Section 11.1 of the Act which deals with geographic indications.  In particular, the amendments eliminated several terms from a list of wine names that had been deemed generic, and accordingly available for use by anyone, in Canada.

The amendments were motivated by an agreement struck in 2003 between the Canadian government and the European Community concerning trade in wine and spirits.  Under the terms of that deal, the Canadian government agreed to amend the Trade-marks Act to gradually eliminate the use of certain European wine and spirit names on Canadian labels, thereby opening the door to European producers to apply for the protection of these names as geographical indications in Canada.

Accordingly, Canadian wine producers are now no longer able to refer to their products using any of the following formerly-generic terms: Bourgogne, Burgundy, Rhin, Rhine, Sauterne and Sauternes.  These terms join the once generic references Bordeaux, Chianti, Claret, Madeira, Malaga, Marsala, Medoc, Médoc, Mosel and Moselle, which were all deemed non-generic when the agreement came into force in June of 2004.  A further series of terms will be legislatively deemed non-generic in 2013, when Chablis, Champagne, Port, Porto and Sherry are removed from the list.

While the loss of generic treatment for these terms (coupled with the acquisition of geographic indication protection by the European Community) may be inconvenient for some Canadian producers, the number of producers affected appears to be relatively small: a regulatory impact analysis study identified only eight registered trademarks that contained these terms. Following consultations with Canadian producers, the government concluded that the impact to these rights-holders was more than offset by negotiated improvements to access to the European market for Canadian wine and spirit producers.

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Jeffrey Vicq is a Partner and co-chair of the Intellectual Property and Information Technology practice groups at Clark Wilson. A lawyer and registered Canadian Trademark Agent, Jeffrey has written and spoken extensively on IP and commercial law issues relating to the Internet and to e-commerce in Canada.