Download Print Version (PDF)

Alternative to the Madrid Protocol in Canada:
DESCRIPTIVE GEOGRAPHICAL INDICATIONS OF ORIGIN

“There is more than one way to skin a cat” (so the proverb goes). Like the proverb, there is more than one way to secure a geographical descriptive mark. In this edition, we look at the obstacles faced by brands for wine, spirit, food, or other agricultural products that use the Madrid Protocol.

Background

The Consorzio del Prosciutto di Parma is responsible under Italian law to regulate the production of prosciutto di parma and the use of the PARMA mark.

However, in Canada, it was unable to stop others from using the PARMA mark for meats that did not originate in Parma, Italy. Those meats did not meet the standards for use of the mark.

The Consorzio unsuccessfully over a period of 10 years sought to register the mark PARMA in Canada to no avail.

At each turn of its application, it was blocked by a previous owner.

Lessons Learned

A national or international application has limitations when it comes to geographical descriptive marks.

To solve its issue, The Consorzio applied for geographical indication.

This case illustrates a key business strategy which brand owners must keep in mind in case of brand warfare: Once entered on the list of Geographical Indications, a Geographical Indication is a powerful tool that can circumvent international and national limitations. Subject to prior existing rights, it has the same force as registration granting exclusive rights.

For more information on this, please contact a member of our team at:
newsletter@ollip.com

About Us

OLLIP P.C. is an intellectual property agency and law firm with offices in Ottawa and Toronto, Canada.

We are the authors of the leading treatise Odutola on Canadian Trademark Practice: Vol. I Prosecution and Vol. II Opposition, Summary Cancellation and Appeals, published by Carswell, a Thomson Reuters Business. This is the only publication, now in its 12th year, which provides strategies and practical advice for managing trademark applications in Canada. Trademark practitioners rely on our publication for solutions to the problems they encounter daily in their practice before the Canadian Trademarks Office.

With our fixed fee approach, for six years in a row we have responded to more Office Actions/Provisional Refusals for trademark owners who manage their own applications than any other firm in Canada.

Editors:
Karen Hansen

Bayo Odutola

OLLIP P.C.
Ottawa Tel.:  613.238.1140 Fax: 613.238.5181
Toronto Tel: 647.496.0313 Fax: 647.496.0315

 

Disclaimer: This briefing note is not legal or professional advice.