Since the Canadian Intellectual Property Office (the "CIPO")'s release of a Practice Notice on 9 November 2016 clarifying its practice with respect to the registrability of geographical names as trademarks in Canada, applicants have faced an uphill battle registering trademarks containing a geographical name or indicator.
Paragraph 12(1)(b) of the Trade-marks Act prohibits, inter alia, the registration of a trademark that is either clearly descriptive or deceptively misdescriptive of the place of origin of the goods or services with which they are associated. The Federal Court of Appeal provided guidance in MC Imports Inc. v. AFOD Ltd., 2016 FCA 60 ("MC Imports") on the interpretation of this paragraph. The Practice Notice sets forth CIPO's interpretation of this decision.
In summary, the first step of the test is to determine if the trademark is a "geographical name". The primary or predominant meaning of the trademark is relevant to that determination, and that determination applies to both the clearly descriptive and deceptively misdescriptive branches. In evaluating whether the trademark is a geographical name, the perspective of the ordinary consumer is only relevant when there is ambiguity as to whether the trademark is a geographical name1. One example provided in the MC Imports decision is the word "Sandwich". "Sandwich" is the name of a number of towns in the United States and the United Kingdom, but it also refers to a food item. In such situation, the perspective of the ordinary Canadian consumer of the associated goods or services must be ascertained to determine if the primary or predominant meaning of the word is a geographical name. If the trademark is considered to be a geographical name and that the associated goods or services originate2 from the location of that geographical name, the trademark will be considered to be clearly descriptive of the place of origin.
According to the Federal Court of Appeal in MC Imports, in assessing whether a geographic name is clearly descriptive of the place of origin, it is irrelevant as to whether the ordinary consumer has knowledge that the goods or services originate from the particular geographical location2. Thus, other than in making the determination as to whether the trademark is a geographical name, the perspective of the ordinary consumer is otherwise irrelevant to determining whether the trademark offends the clearly descriptive branch of paragraph 12(1)(b).
With respect to the deceptively misdescriptive branch of paragraph 12(1)(b), the Practice Notice indicates that a trademark is misdescriptive if the trademark is a geographical name and the associated goods or services do not originate from the location of the geographical name. A trademark is registrable even if it is merely misdescriptive of its associated goods or services. The registrability of a trademark is only prohibited if it is "deceptively" misdescriptive. In assessing whether a trademark is "deceptively" misdescriptive, the perspective of the ordinary consumer of the goods and services is relevant. The test is 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.
Since the publication of the Practice Notice, CIPO trademark examiners have been quite stringent in examining any application for a trademark containing a geographical name or indicator. In straightforward situations where the trademark is a word mark which is the name of a geographical location, it is expected that an examiner will object to the application on the basis of paragraph 12(1)(b) and thereby seek confirmation from the applicant as to the actual place of origin of the associated goods or services. However, it appears that the CIPO's current practice is that examiners will raise a paragraph 12(1)(b) objection against an application even where the geographical name or indicator is an insignificant component of the trademark. One example of such is where the applied-for trademark is a design mark or a composite mark that consists of other distinctive design and/or word elements combined with a geographical name or indicator, such as the Canadian maple leaf.
The CIPO's current practice in raising paragraph 12(1)(b) objections to applications where the geographical name or indicator is an insignificant component of the trademark is problematic. Most significantly, it is trite law that a trademark must be assessed as a whole. Arguably, a trademark cannot be taken as being clearly descriptive or deceptively misdescriptive of a geographical name or indicator if the trademark consists of other elements that dominate the depiction of the trademark, and the CIPO has accepted this in the context of examining composite trademarks for descriptiveness. Specifically, the CIPO's practice notice entitled "Paragraph 12(1)(b): "Sounded" Test Applied to Composite Marks Which Include Words that Are the Dominant Feature of the Mark" makes clear that the CIPO takes the position that only one element in a trademark can be considered to be dominant. If the word element and the design element in a composite trademark are considered equally prominent, then neither the word element nor the design element can be the dominant feature of the trademark. In such situation, the trademark should be registrable since the trademark as a whole is not clearly descriptive.
While there is room for arguments to be made to rebut such an objection based on a very strict interpretation of geographic descriptiveness, this inevitably increases prosecution costs for applicants who are represented by trademark lawyers. Unrepresented applicants who do not have sufficient funds to consult trademark lawyers may lack sophistication to deal with such an issue, ultimately abandoning their application.
The CIPO's application of the Practice Notice in assessing geographical names or indicators under paragraph 12(1)(b) creates a potentially insurmountable burden for interested applicants. If all arguments before the CIPO fail, interested applicants may have to rely on subsection 12(2)3 or section 144 of the Trade-marks Act to overcome a paragraph 12(1)(b) objection in order to obtain registrations for geographical names or indicators as trademarks, although it is not necessarily easy to meet the burdens imposed by those sections.
Each trademark must be assessed individually to assess whether it is potentially unregistrable as clearly descriptive or deceptively misdescriptive of the place of origin of goods or services. It is advisable to first consult a trademark lawyer to assess your trademark and to discuss possible strategies for registering your mark.
1 MC Imports, paras 57-64.
2 According to the Trademarks Examination Manual, "goods or services may be found to originate from a geographic location if they are manufactured, produced, grown, assembled, designed, provided or sold there, or if the main component or ingredient is made in that geographic location."
3 An applicant can benefit from subsection 12(2) if it can show that the applied-for geographic name or indicator had been used in Canada as a trademark by the applicant or its predecessor in title so as to have become distinctive as of the date of filing an application for its registration.
4 An applicant can benefit from section 14 if it or its predecessor in title has registered the geographic name or indicator as a trademark in or for its country of origin and can furnish evidence which shows that the trademark is not without distinctive character in Canada. However, note that pending applications which have not yet been advertised in the Trade-marks Journal will no longer have the benefit of relying on subsection 14 to overcome a paragraph 12(1)(b) objection when amendments to the Trade-marks Act come into force, which is expected sometime in late 2018 or early 2019.
To view the original publication click here
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.