Trademarks and Geography

In order to obtain a trademark registration in Canada, a trademark cannot be a mark which is clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services (absent a finding of acquired distinctiveness or secondary meaning, through affidavit evidence).  While this has been the law in Canada for many decades, it has been the subject of a great deal of inconsistency and uncertainty, and the policy for interpreting this provision was recently updated by the Canadian Intellectual Property Office on November 9, 2016 in a Practice Notice, in order to clarify how trademarks which have geographic significance will be treated in the future.

The Practice Notice was precipitated by a 2016 decision of the Federal Court of Appeal in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60, dealing with the trademark LINGAYEN for use in association with Filipino food products.

The first step in the process is to determine whether the trademark in question is a geographic name.  The Examination Manual provides that a geographic name can include a street name, a neighbourhood, a city, region, province, state, country or continent.  Either the sole meaning of the mark can be a geographic name, or if there are multiple meanings, then the primary or predominant meaning must be as a geographic name, if the prohibition is to apply.  In order to make this determination, the perception of the ordinary Canadian consumer of the associated goods or services must be taken into account.

If the trademark is a geographic name, and the associated goods or services originate from the location, then the trademark will be deemed to be clearly descriptive and therefore prohibited.  In such a case, it is immaterial whether consumers make this connection.

If the trademark is a geographic name, and the associated goods or services do not in fact originate from the location, then the trademark will be prohibited as being deceptively misdescriptive, but only once the perception of the ordinary consumer has been considered, and only if that consumer would be misled into the belief that the goods and services originated from the location of the geographic name in the mark.

Accordingly, when adopting a trademark which may have a geographical significance, it will be useful to consider the ramifications of this Practice Notice and the jurisprudence in order to determine the degree of protection which may be available for the trademark.