CIPO New Practice Notice: Decriptiveness & Place of Origin [MC Imports Inc. v AFOD Ltd.]

On February 23, 2016, the Federal Court of Appeal delivered its judgment for the case of MC Imports Inc. v AFOD Ltd. (2016 FCA 60). The appeal addressed the validity of a trademark when that mark is a geographical location.

In response to the findings of the case, the Canadian Intellectual Property Office (CIPO) released a new Practice Notice, which offers further guidance with respect to the current practice and test of assessing registrability and applying the descriptiveness analysis to geographical names. The Practice Notice is intended to clarify the Trademarks Office practice with respect to applying the provisions relating to place of origin in para 12(1)(b) of the Trade-marks Act to geographical names.

Section 12(1)(b) of the Trade-marks Act states that a trademark is registrable if it is not clearly descriptive or deceptively misdescriptive of the character or quality of the goods or services in association with which it is used…or of their place of origin.

MC Imports Inc. is a company that imports and sells food products, including bagoong shrimp paste products, under the trademark “Lingayen”. Lingayen is a municipality in the Philippines, which is known for its bagoong shrimp paste products characterized by their distinct aroma and flavour.

In the Federal Court, MC Imports alleged infringement of its trademark by the respondent, AFOD Ltd.

The Court of Appeal upheld the Federal Court’s decision that MC Import’s trademark for “Lingayen” should be invalidated because the bagoong shrimp paste came from Lingayen in the Philippines, which, the Court held, is the only meaning for this word.

For the Court, since the trademark “Lingayen” had only one meaning, which was the location where the goods originated, the trademark was clearly descriptive of the place of origin of those goods, and was therefore not registrable.

In its analysis, the Court presented an assessment of descriptiveness and evaluated how to determine whether a geographic name is unregistrable as a trademark because it is clearly descriptive of place of origin.

The Court reasoned that this is done:

(i) By determining that the trademark is a geographical name;

(ii) By determining the place of origin of the wares or services;

• if the wares or services originate in the place referred to by the trademark, then the trademark is clearly descriptive of place of origin

• on the other hand, if the trademark refers to a geographic place that is not the actual place of origin of the goods or services, then it cannot be clearly descriptive of place of origin – it is misdescriptive, and further analysis is required to determine whether it is deceptive

• a trademark is deceptively misdescriptive if 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 (and is also therefore not registrable)

Thus: if a trademark is a geographic name that refers to the actual place of origin of the goods and services with which the trademark is associated, it is clearly descriptive of place of origin within the meaning of para 12(1)(b) of the Act, and is therefore not registrable; and

(iii) By assessing the trademark’s owner assertions of prior use, if any

A trademark will be determined to be a geographic name if research shows that:

• the trademark has no meaning other than as a geographic name; or

• despite having multiple meanings, the trademark has a primary or predominant meaning as a geographic name

The CIPO Practice Notice clarifies that the primary or predominant meaning is to be determined from the perspective of the ordinary Canadian consumer of the associated goods or services.

The Practice Notice also states that if a trademark is determined to be a geographic name, the actual place of origin of the associated goods or services will be ascertained by way of confirmation provided by the applicant, and is determined irrespective of the address of the applicant.

The timely release of guidance and clarity in this area of trademark law is likely not a coincidence in light of the upcoming changes and influence of the Madrid protocol and the impact of increasing foreign trademark applicants.