The South African Supreme Court of Appeal ruled on . A helpful on the case can be found at the Adams & Adams website. They represented the appellant.

In December 2007 Century City Property Owners Association sued Century City Apartment Property Services CC for trade mark infringement. Most pertinent was the trade mark registration for ‘Century City’ as regards to retail, wholesale, marketing, distribution, hiring, leasing, mail order and all kinds of merchandising services.

The Appellant (Century City Apartment Property Services CC), had brought a counter-application seeking the revocation of the trademarks. Its argument centered on Section 10(2)(b) of the .

Section 10 of the Trade Marks Act 194 of 1993 covers marks that should not be registered, or if registered are liable to be removed from the register. Unregistrable under section 10(2) is a mark which:�� “(b) consists exclusively of a sign or an indication which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of the goods or services, or the mode or time of production of the goods or of rendering of the services.”

The Appellant’s position was that the marks owned by the Property Owners Association, no longer represented its services. This was established in two steps. First, Century City began reflecting the place’s name. Second, the services of many other businesses moved or appeared in the location now known as Century City. Therefore, Century City is now a mark which serves to designate the geographic origin of the many goods and services provided there. It cannot be limited to the property owners association. ����

The Supreme Court of Appeal focused on the services offered under the trade mark. Its first step was to decide whether Century City had become a place name within the meaning of s. 10(2)(b) of the . It concluded that Century City had become a place name. The mark was now a geographic origin; the development of the area had led to this result. Back in 1997, the original developer could register the trademark; there was no location called ‘Century City’ yet. This changed over time. Second, could the mark serve, in trade, to designate geographical origin for the services offered in the classes of the trade mark registration? Given that so many businesses had moved into the area, which offer the services under the Century City trade mark registration (retail, wholesale, marketing, distribution, hiring, leasing, mail order, etc.), it may serve to designate the geographic origin of those services. Thus, the Court ordered that the mark registration be expunged for those classes of services falling under s. 10(2)(b) of the Trade Marks Act.

In Canada, Section 10 under the deals with a mark that has by ordinary commercial usage come to designate a place of origin. It is to prohibit the adoption of a general mark denoting location as a private trade mark (monopolization), or the adoption of a similar mark that would be misleading.

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Food enthusiasts and artisan producers around the world know how important terroir is for a range of foods from cheese to wine to smoked meat. Flavour, nutritional content, and shelf life of products can all be affected by terroir - a set of location-specific characteristics given to food and beverages by the geographical and climate conditions, and traditional preparation practices particular to a place.

The World Trade Organization gave the concept legal life when it embodied terroir under the category of geographical indications (GIs). Encompassing all sorts of geographically specific products, GIs have mostly been used for food, and most prominently for wine and spirits, which enjoy "additional protection" under the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Under the Geographical Indications for Wines and Spirits registered with the Canadian Intellectual Property Office, one can find 28 regional designations coast to coast. Overseen by the industry's self-regulating body, the Vintners Quality Alliance (VQA), these designations are intended to preserve the terroir of wine by not only requiring that at least 85% of grape juice in a batch of wine comes from the designated area, but also by taste-testing wine samples to ensure that each variety indeed preserves the "varietal characteristics" of that particular grape. As with GIs the world over, these designations promote our romanticized notions that the wine not only comes from local grapes but is also imbued by cultural traditions involved in its making. Meanwhile, the vineyards in southwestern Ontario show that grapes in the Lake Erie North Shore and Pelee Island regions (both listed under those 28 Canadian designations) are more often than not grown and picked by migrant workers, a segment of the 17 000 seasonal work force that comes to Ontario every year, mostly from Mexico and the Caribbean. They are employed by wineries (along with greenhouses and tomato field operations), which cannot recruit local workers to do the backbreaking work that pays little if anything above minimum wage.

While the seasonal worker program is overseen by Service Canada, which ensures that workers are properly compensated, protected and insured, one has to wonder about a slew of global inequalities implied by the fact that Mexican and Jamaican workers are here to do the work nobody local will do. Even when accommodations, plane tickets and work permit costs are taken into account, migrant labourers make financial sense. A testimony to Canadian assumptions of cheap food (see note below), this is merely another side of outsourcing, but one legitimized by GI designations that still give products the noble status of 'local.'��

Across the Atlantic Ocean, where notions of both terroir and GIs originated, there is much resemblance. The hardest labour in Italian, French and German vineyards, creameries and ham production facilities is often done by migrant workers. Most of the labourers in France and Italy come from North Africa, and those in Germany from Turkey and Eastern Europe. The legacy of colonial history remains stark in the European Union, and this migrant labour force is arguably the most important blind spot of GIs.

Meanwhile, the smallest of wine, cheese, and ham producers in Europe who actually do imbue their food with cultural continuity, are often too overwhelmed by the bureaucratic processes and the costs involved to even bother registering their products. Similarly, some of the smallest wineries in southwestern Ontario cannot afford to pay the fees required for VQA testing as their batches are small and only sold in their production facilities. While their wines are bestowed with as much terroir as that VQA bottle in the liquor store, they are left out of the GI club.

GIs, though ostensibly conceived as way to protect taste and cultural traditions in one stroke, have done nothing for the labour behind those fine but often privileged concepts. All labels mediate and as such have the ability to frame issues in very particular ways. They can also make us blind to issues of social justice and inequalities hidden behind a designation stamp. There is no official designation for a block of cheese that can replace the face of a dairy farmer at a local market. A visit to a regional winery can give consumers a much better sense of what it is they are purchasing, than any kind of label ever could. Those face-to-face interactions speak volumes, whether the producers are local or migrant. No amount of regulation, standardization and labelling can replace personal connections to our food and its producers. Ultimately, that is what terroir is all about - the whole of the food experience, gustative and cultural. GIs on the other hand are about protecting commercial rights and that puts them miles away from both culture and labour justice.

(Canadians spend less than 10% of their income on food. This compares to over 10% for the industrialized European countries and Australia, and up to 30% or 40% for many Eastern European and Asian countries, while data for most non-industrialized countries is not even available. USDA Economic Research Service, 2007, ).

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What are Geographical Indications in Canada?

Geographical Indications ("GIs") are protected indicia that specifically relate to wines and spirits under the Canadian Trade-marks Act ("the Act").�� A GI identifies the "quality, reputation or other characteristic of the wine or spirit [that] is essentially attributable to its geographical origin".¹��

Once GI protection is obtained, any person is prohibited from using, in any language, the GI as a trade-mark, or otherwise, in connection with a wine or spirit, if it does not originate from the protected territory associated with the GI.��

The Act creates an exception for specifically identified generic wine names, which allows them to be used as a trade-mark or in connection with a wine business.�� Use of these generic wine names cannot be restricted as GIs.����������

What are the statutory changes?

Amendments to the Act have narrowed the list of generic wine names.�� Effective as of December 31, 2008, ‘Burgundy', ‘Bourgogne', ‘Rhine', ‘Rhin', ‘Sauterne' and ‘Sauternes' are no longer protected as generic wine names.��

This is part of a multi-stage process to bring Canada's legislation into compliance with The Agreement between Canada and the European Community on Trade in Wines and Spirit Drinks ("the Agreement") entered into on September 16, 2003.�� In the final stage of implementation of the Agreement, ‘Chablis', ‘Champagne', ‘Port', ‘Porto', and ‘Sherry' will be removed from the list of generic wine names on December 31, 2013.��

��

What does this mean?

It is anticipated that the amendments to the list of generic wine names is a precursor to allow European wine producers to apply for protection of wines as GIs in Canada.�� This trend has already been established.�� For example, on the date of entry into force of the Agreement, ‘Bordeaux', ‘Chianti', ‘Claret', ‘Madeira', ‘Malaga', ‘Marsala', ‘Medoc', Médoc', ‘Mosel' and ‘Moselle' were removed as generic wine names.�� As of April 27, 2009, more than half of these wine names are now protected GIs.

As a result, only wines that come from the specific region in which the GI is produced will be able to use that specific wine name.�� If the GI list expands, this will impact trade-mark, marketing and labeling strategies of wines sold in Canada that do not come from the protected GI region.��������

��

How do you obtain a GI in Canada?

A "responsible authority" submits an application to the Canadian Trade-marks Office, which is subsequently examined by Agriculture and Agri-Food Canada.�� The application must set out, amongst other things:

"the quality, reputation or other characteristic of the wine or spirit that in the opinion of the Minister qualifies that indication as a Geographical Indication."²

Upon approval, the application is subsequently published in the Canada Gazette, which provides third parties with the opportunity to object to the wine name becoming a GI.�� The only basis of objection is that "the indication is not a Geographical Indication."³

��

What can you do?

There are two roles a party can play: applicant or objector.�� If you satisfy the requirement of a "responsible authority", namely that you are "by reason of state or commercial interest, sufficiently connected with and knowledgable with the wine"⁴, you can file an application for GI protection for a previously generic wine name.�� If, however, you do not qualify as a "responsible authority" but have a vested interest in having the wine name not protected as a GI, you can attempt to block the wine name from becoming a GI through the objection process.��

��

¹Trade-marks Act, R.S.C. 1985, c. T-13, Section 2

^2��Ibid, Section 11.12(3)(e)

³��Ibid, Section 11.13(2)

⁴��Ibid, Section 11.11

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By way of background, Glen Breton is a single malt whisky made in Nova Scotia using the traditional Scottish method. It competes directly with scotch whiskies but cannot be marketed as a “Scotch” because that term is a protected geographical designation which can only be used in reference to whiskies produced in Scotland.

The Trade-marks Opposition Board sided with Glenora in finding that “glen” had not become recognized as designating a whisky’s geographic origin. However, the Federal Court was of the and in fact found that there was actual confusion in the marketplace.

In the FCA’s of January 22^nd, Sexton J.A. found in favour of Glenora. However, the basis for the FCA’s decision did not lie in deciding whether or not “glen” had become recognized as indicating a Scottish origin but on a finding that “glen” was not in fact a “mark” within the meaning of s.10.

prohibits the adoption of marks that have become recognized in Canada through commercial usage as designating the kind, quality, quantity, destination, value, place of origin or date of production of wares or services.

The Court found that “[t]he word ‘glen’, standing alone, has never been used as a trademark in Canada, for any product” and, only being a segment of any registered trademark, “glen” alone could not therefore be a mark under s.10. To reach this conclusion, the court relied on authorities outside the context of s.10 which state “that trademarks should not generally be dissected and analyzed syllable by syllable”.

While acknowledging that the term “mark”, used in s.10, is broader than the term “trademark”, the Court remained unpersuaded that a segment of a trademark can stand alone as a mark.

After making this argument, Sexton J.A. went on to comment on the unusualness of attempting to use s.10 in this way. Here, a monopoly was being sought by a group over a word, which is not inherently descriptive, where it is unclear that anyone using the prefix had done so for the purpose of indicating that their whiskies were from Scotland.

He went on to note that should the prefix “glen” be found to be a mark prohibited under s.10, the language of s.10 would then jeopardize existing whisky trademarks that incorporate “glen”, which is what the Scotch Whisky Association is trying to protect in the first place. This rejected the notion that s.10 would not apply where the use of the indicator was true.

While the outcome seems just, we are left with the somewhat unsatisfactory outcome of having a lower court ruling stating that the use of “glen” is causing actual confusion in the marketplace as to the origin of whisky and a higher court ruling saying that there is no relief available because “glen” has only ever been used as a segment of a trademark. Thus the policy debate over the degree to which and method by which we want to be awarding monopolies over marks with geographic connotations continues on.

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