In view of the recent Federal Court of Appeal decision in MC Imports Inc v Afod Ltd., 2016 FCA 60, the Canadian Trademarks Office has recently put in place a new Practice Notice to clarify the legal test when dealing with cases involving geographic place names.
Under section 12(1)(b) of the Trademarks Act, a trademark is not registrable if it is considered to be either clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services in which they are associated. In view of the MC Importscase, if the trademark is a geographic name and the associated goods or services originate from the location of the geographic name, the Trademarks Office will consider the trademark to be unregistrable in view of section 12(1)(b) of the Trademarks Act. In other words, if the trademark is a geographic place name from where the associated goods or services originate, the Trademarks Office will likely now refuse the application. Consumer belief or perception will no longer be considered.
A trademark will be considered to be a geographic name if research shows that it has no meaning other than as a geographic name or, if it does have multiple meanings, the primary or predominant meaning is a geographic name.
The primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services.
The Notice also states that a trademark is misdescriptive if the trademark is a geographic name and the associated goods or services do not originate from the location of the geographic name. If the trademark is misdescriptive, further analysis must be made to determine if it is deceptively misdescriptive. In this scenario, the Trademarks Office would take into consideration whether the ordinary consumer would be misled into the belief that the associated goods or services had their origin in the location of the geographic name in the trademark.
In light of the MC Imports case and this new Practice Notice, any trademark application that is the geographical place name where the associated goods or services originate, will be refused, unless acquired distinctiveness can be shown as of the filing date of the application
We of course would be happy to review any specific geographical place name case and advise whether it could be registrable in Canada and, for existing registrations, whether they could now be vulnerable to a validity challenge before the Courts in Canada.
Questions? If you have any questions please call 613-232-5300 to speak to a professional or email us at OwnWhatsYours@aventum.law.
