CIPO Trademark Practice Update – Descriptiveness and Place of Origin

The Canadian Intellectual Property Office has recently released a new practice notice (found here) in response to the recent decision of the Federal Court of Appeal in MC Imports Inc. v. AFOD Ltd..

Section 12(1)(b) of the Trade-marks Act provides that a trademark is registrable if it is not either clearly descriptive or deceptively misdescriptive of the place of origin of the associated goods and services.

This case and the associated practice notice serve to clarify the test when making this assessment of registrability. One of the main questions before the Court of Appeal was: by whose knowledge do we make this assessment of descriptiveness?

More specifically, should we consider the knowledge of the general public? Or, on the other hand, the knowledge of the ordinary consumer of the goods or services? One can readily appreciate that a discerning customer of a specialized product (such as cheese or wine) may be much more aware of the names of the geographic places where such products do (or do not) originate from.

In MC Imports, the Federal Court of Appeal upheld the Federal Court’s decision that MC Import’s trademark for “Lingayen” should be invalidated, as the associated bagoong shrimp paste came from a place in the Philippines called Lingayen, which is the only meaning for this word.

In its analysis, the Court of Appeal provided a rather straightforward framework of this analysis: if the trademark under consideration has only one meaning, and that one meaning is the location where the goods or services originate, the trademark is clearly descriptive of the place of origin of those goods and services, and is therefore unregistrable.

If, on the other hand, the goods and services do not emanate from that location, one must further determine if this misdescriptiveness is deceptive. This additional layer of analysis involves asking the question: would the ordinary consumer of the goods or services be misled into the belief that they had their origin in the location of the geographic name in the trademark? If so, the trademark is deceptively misdescriptive and is also therefore unregistrable.

Canadian trademark owners and practitioners are sure to welcome the certainty provided by the Federal Court of Appeal and the Canadian Intellectual Property Office in this specific, yet increasingly important, area of intellectual property law. This is especially so in light of the fact that Canada may see an influx of foreign trademark applicants through the Madrid protocol in the upcoming years.

For more information about descriptive trademarks, contact our Intellectual Property Group.